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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
`
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`PALO ALTO NETWORKS, INC.,
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
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`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-001591
`U.S. Patent No. 8,677,494
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`__________________________________________________________
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`
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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 Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Patent Owner’s Motion to Exclude (“Motion,” Paper 35) should be granted.
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`I.
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`Petitioner’s Improper Reply Exhibits, Arguments Should be Excluded.
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`Petitioner’s Exhibits 1091, 1093-1097, and related arguments, introduced in
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`its Reply, should be excluded as improper new evidence. Motion at 1-5. The
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`Federal Circuit recognizes the timeliness of this request here, and emphasizes the
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`“obligation for petitioner[] to make [its] case in [its] petition to institute,” rather
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`than sandbag a Patent Owner in its Reply. Id.; Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). Petitioner concedes
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`that the information in the exhibits was available at the time it filed its Petition.
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`Petitioner admits it offers Exhibits 1095-1097 as evidence of Swimmer’s
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`alleged public availability. Paper 42 (“Opp.”) at 2. Petitioner should have been
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`aware that Patent Owner would challenge Swimmer’s public accessibility date as it
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`is Petitioner’s burden to establish it. Motion at 3. Pointing out that Petitioner
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`failed to carry its burden does not open the door for Petitioner to try again with
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`new evidence. Rather than rebut Patent Owner’s arguments, Petitioner is trying to
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`rehabilitate its case. Thus, Exhibits 1095-1097 should be excluded. Motion at 2-4.
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`Similarly, Exhibits 1093 and 1094 should be excluded. Petitioner utilizes
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`these exhibits in a belated attempt to remedy its Petition’s deficiencies. Petitioner
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`is not utilizing these exhibits to “rebut Finjan’s characterizations” of a POSA’s
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`understanding of “some operations…as potentially malicious.” Opp. at 3. Rather,
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`1
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Petitioner uses them in an attempt to justify Petitioner’s and Dr. Rubin’s reliance
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`on an MS-DOS book “to support that Swimmer’s function numbers correspond to
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`computer operations.” Paper 26 at 9. This delayed use of evidence has “denied
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`[Patent Owner] the opportunity to file responsive evidence” regarding key
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`evidence to Petitioner’s position and thus should be excluded. Motion at 3-4; The
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`Scotts Co. v. Encap, LLC, IPR2013-00110, Paper 79 at 5-6 (PTAB June 24, 2014).
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`Exhibit 1091 should also be excluded as Petitioner improperly relies on it
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`beyond the scope of its Reply. Patent Owner did not include this document as an
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`exhibit and Petitioner does not offer any authority to support its dubious theory that
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`a citation in one of Patent Owner’s exhibits to Exhibit 1091 opens the door to
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`Petitioner’s unbridled use of this document. In particular, Petitioner admits that
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`Exhibit 1091 pertains to Avast’s products meeting the ‘494 Patent claims in
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`connection with secondary considerations of non-obviousness. Opp. at 2-3.
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`Petitioner, however, cites Exhibit 1091 in its Reply “to rebut Finjan’s assertion that
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`Swimmer does not disclose ‘DSP data, including a list of suspicious operations.’”
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`Id. at 2. Thus, Petitioner is improperly utilizing Exhibit 1091 to support a belated
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`attempt in its Reply to remedy the deficiencies in its Petition. Motion at 4-5.
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`II. The Board Should Exclude Exhibits 1088 and 1089.
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`Petitioner concedes it could have submitted Exhibit 1089, Mr. Hawes’
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`second declaration, with its Petition and that the exhibits and information in it
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`2
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`could have been included with his first one. Motion at 9-10; Opp. at 4. On this
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`basis alone, it should be excluded. Further, Petitioner solely cites to Exhibit 1089
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`in its Reply in connection with its contention that Swimmer was “distributed to 163
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`attendees and offered for sale.” Paper 26 at 5. However, Mr. Hawes admitted that
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`the “163 attendees” were only registered delegates and there was no confirmation
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`that any of them attended the conference. Motion at 9-12; Ex. 2045 at 22:10-21.
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`Thus, Exhibit 1089 should be excluded as untimely, unreliable and conclusory.
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`Petitioner also does not address that Exhibit 1088 should be excluded
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`because Mr. Hawes testified that he did not begin working at Virus Bulletin until
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`10 years after the conference where Swimmer was allegedly distributed. Motion at
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`10-12. Mr. Hawes’ statements regarding Swimmer’s alleged public availability
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`were based on hearsay and not confirmed when he wrote Exhibit 1088. Id. Thus,
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`Exhibit 1088 should be excluded as unreliable, conclusory and unauthenticated.
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`III. The Board Should Exclude Exhibit 1095.
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`Petitioner does not contest that it could have included Exhibit 1095 with its
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`Petition and that it offers the document in support of Swimmer’s alleged public
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`availability. Petitioner also ignores Dr. Hall-Ellis’ admission that the date on the
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`MARC record she relies upon did not indicate whether Swimmer was publicly
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`available at the Virus Bulletin International Conference. Motion at 7-9. This fact
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`alone requires that Exhibit 1095 be excluded as untimely and unreliable. Id.
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`3
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`IV. The Board Should Exclude Exhibits 1092, 1098 and 1100.
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`For the reasons set forth in the Motion, and those discussed herein, the
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`portions of the Reply relying on Exhibits 1092, 1098 and 1100 should be excluded.
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`First, Petitioner now admits that Exhibit 1092 relates to an entirely different
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`patent than that at issue here but failed to disclose this key fact in its Reply, which
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`improperly implies that “Finjan’s admission” regarding the meaning of
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`“suspicious” in Exhibit 1092 pertains to the ‘494 Patent. Opp. at 7; Paper 26 at 7.
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`Furthermore, Petitioner does not even address the key differences, outlined in
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`Patent Owner’s Motion, between the claim language of the ‘844 Patent and the
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`‘494 Patent. Compare Opp. at 7 with Motion at 5-6. Thus, the portions of the
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`Reply relying on Exhibit 1092 should be excluded as irrelevant and prejudicial.
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`Second, the portions of the Reply citing to Exhibits 1098 and 1100 should
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`be excluded because Petitioner misrepresents their contents in alleging that Patent
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`Owner has not shown licensees’ products practice the claims. Motion at 6-7. Both
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`Drs. Medvidovic and Goodrich evaluated the licensees’ practice of the patent
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`claims. Dr. Medvidovic simply explained that “additional analysis” for one of the
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`claim charts would be necessary to prove infringement – a standard not required
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`here. Opp. at 8. Similarly, Dr. Goodrich explained that the various third party
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`products practice the ‘494 Patent. Motion at 6-7. Thus, because of Petitioner’s
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`misrepresentations of these exhibits, the portions of the Reply relying on them
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`4
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`should be excluded as having minimal probative value outweighed by prejudice.
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`V. Exhibit 1006 (Swimmer) Should Be Excluded.
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`Exhibit 1006 should be excluded because it is unauthenticated, hearsay and
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`irrelevant. Motion at 12-13. Petitioner relies solely on the “testimony of Mr.
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`Hawes” in its conclusory assertions that “Swimmer was authenticated.” Opp. at
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`11-12. However, for the reasons discussed supra and in the Motion, both of Mr.
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`Hawes’ declarations should be excluded. Moreover, Petitioner’s arguments all rely
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`on the assumption that Swimmer is prior art, but Petitioner has failed to
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`demonstrate that Swimmer was publicly available. Motion at 12-13. Therefore, it
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`is not relevant. Further, and contrary to Petitioner’s position, the mere date on a
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`document is insufficient to establish its date of public availability. See Motion at
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`14 (collecting cases). Thus, Exhibit 1006 should be excluded. Motion at 12-13.
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`VI. Exhibit 1047 Should be Excluded.
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`Exhibit 1047 should be excluded. As set forth in the Motion, and which
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`Petitioner fails to rebut, Exhibit 1047 itself reflects two different dates. Motion at
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`13-15; Opp. at 13-15. Dr. Rubin’s testimony also fails to authenticate and
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`establish Martin as prior art. Dr. Rubin does not provide a copy of the proceedings
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`from the conference which he alleges to have in his possession nor does he claim
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`that Exhibit 1047 is a true and correct copy of what he alleges to have distributed
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`at the conference. Thus, Exhibit 1047 should be excluded. Motion at 13-15.
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`5
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`VII. Conclusion
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`For the foregoing reasons, the Board should grant Patent Owner’s Motion.
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`Dated: February 2, 2017
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`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`
`
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
` (Case No. IPR2016-00159) Attorneys for Patent Owner
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`6
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`CERTIFICATE OF SERVICE
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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 Reply to Petitioner’s Opposition to
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`Patent Owner’s Motion to Exclude was served on February 2, 2017, by filing this
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`document through the PTAB E2E system as well as delivering via electronic mail
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`upon the following counsel of record for Petitioner and Joinder Petitioner:
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`
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`7
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`
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`Patent Owner’s Motion to Exclude
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Michael T. Rosato
`Andrew. S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`Neil N. Desai
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071-2027
`ndesai@wsgr.com
`
`
`
`
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`8
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`
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