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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`
`Petitioner’s Reply
`IPR2016-00159
`
`Table of Contents
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`Page
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`I.
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`PARAGRAPHS 159-66 OF THE MEDVIDOVIC DECLARATION
`(EX. 2011) ARE INADMISSIBLE ................................................................ 1
`THE DAVIDSON TRANSCRIPT (EX. 2016) IS INADMISSIBLE ............ 2
`II.
`III. EXHIBIT 2020 (WIKIPEDIA DEFINITION) IS INADMISSIBLE ............. 3
`IV. EXHIBIT 2022 (TECHTERMS.COM DEFINITION) IS
`INADMISSIBLE ............................................................................................ 4
`EXHIBITS 2024 AND 2025 ARE INADMISSIBLE .................................... 5
`
`V.
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`-i-
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`Petitioner’s Reply
`IPR2016-00159
`
`Table of Authorities
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`Page(s)
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`Cases
`Brose North Am. v. UUSI, LLC,
`IPR2014-00417, Paper 49 (PTAB July 20, 2015) ............................................ 4, 5
`IBM Corp. v. Intellectual Ventures II LLC,
`IPR2015-00092, Paper 44 (PTAB Apr. 25, 2016) ............................................... 1
`Nestle Health Nutr., Inc. v. Steuben Foods, Inc.,
`IPR2015-00249, Paper 76 (PTAB June 2, 2016) ................................................. 2
`
`Sony Corp. v. Yissum Research and Dev’t Co. of the Hebrew Univ. of
`Jerusalem,
`IPR2013-00219, Paper 16 (PTAB Sept. 22, 2014) ........................................... 3, 4
`Other Authorities
`F.R.E.
`401-402 ......................................................................................................... 3, 4, 5
`702-703 ......................................................................................................... 1, 2, 4
`802 ..................................................................................................................... 3, 4
`807 ..................................................................................................................... 2, 3
`901 ......................................................................................................................... 4
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`ii
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`Petitioner’s Reply
`IPR2016-00159
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`
`
`I.
`
`PARAGRAPHS 159-66 OF THE MEDVIDOVIC DECLARATION (EX. 2011) ARE
`INADMISSIBLE
`Finjan’s assertion that “Petitioner waived [its] objections by failing to timely
`
`assert them” is false. (Paper 43 at 1-2.) Petitioner timely objected to Dr.
`
`Medvidovic’s opinions under FRE 702-703 because they “are based on unreliable
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`facts, data, or methods,” lack “any independent analysis,” and “are not based on
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`sufficient facts or data.” (Paper 18 at 2-3.) Petitioner identified Dr. Medvidovic’s
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`opinion that licensing showed non-obviousness, which relates directly to Dr.
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`Medvidovic’s failure to show nexus between the claims and any licensing or
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`commercial success. (Ex. 2011 at ¶¶ 159-66.) Unlike IBM Corp. v. Intellectual
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`Ventures II LLC, IPR2015-00092, Paper 44 at 55 (PTAB Apr. 25, 2016), where
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`patent owner changed its objection by asserting the reference was not prior art,
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`Petitioner’s objection identified both its general objection and an example of the
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`same deficiency that is the subject of its motion to exclude. (Paper 31 at 1-3.)
`
`Finjan does not dispute that Dr. Medvidovic failed to cite or attach any
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`Finjan license as an exhibit, identify the amount paid under any license, or identify
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`the number of patents in each license. (Paper 31 at 1; Paper 43 at 1-4.)
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`Accordingly, Dr. Medvidovic’s testimony regarding licensing of the ’494 patent is
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`based on insufficient facts and unreliable methods and should be excluded. F.R.E.
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`702-703. Similarly, even
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`if Dr. Medvidovic reviewed publicly available
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`1
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`Petitioner’s Reply
`IPR2016-00159
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`information regarding licensees’ products, he did not analyze what portion, if any,
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`of the licensees’ revenues were attributable to the alleged invention—analysis that
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`is necessary to show nexus. (Ex. 1100, Medvidovic Dep. at 75:5-16, 65:17-20,
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`81:23-84:19.) Accordingly, paragraphs 159-66 should be excluded because they
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`are based on insufficient facts and unreliable methods. F.R.E. 702-703.
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`II. THE DAVIDSON TRANSCRIPT (EX. 2016) IS INADMISSIBLE
`Finjan relies on Dr. Davidson’s characterizations of Swimmer to prove the
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`truth of those statements regarding Swimmer; therefore, Exhibit 2016 is hearsay.
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`(See Paper 17 at 22-23, 33-34, 40.) Patent Owner asserts that the transcript is
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`admissible under the residual hearsay exception, but has not shown that the
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`transcript is “more probative . . . than any other evidence that the proponent can
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`obtain through reasonable efforts.” F.R.E. 807. Finjan already relied on testimony
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`by Dr. Medvidovic—an alleged expert in this proceeding whom Petitioner was
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`able to cross-examine. (See Ex. 2011.) Rather than rely on Dr. Medvidovic’s
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`testimony—which Finjan can clearly obtain through reasonable effort—Finjan
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`relies on a witness that Petitioner was unable to cross-examine. In Nestle Health
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`Nutr., Inc. v. Steuben Foods, Inc., IPR2015-00249, Paper 76 at 12-14 (PTAB June
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`2, 2016), the court admitted a transcript from a related proceeding under FRE 703
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`as relevant to secondary considerations, but that testimony concerned an FDA
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`validation of a third party product—a topic for which only that witness could offer
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`2
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`Petitioner’s Reply
`IPR2016-00159
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`probative
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`information. Here, Finjan
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`identifies no reason Dr. Davidson’s
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`interpretation of a term at issue is “more probative . . . than any other evidence”
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`Finjan could have obtained. Similar evidence could have been obtained from Dr.
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`Medvidovic, allowing Petitioner to cross-examine and challenge the evidence.
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`Accordingly, permitting Finjan to shoehorn in additional evidence that cannot be
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`cross-examined by Petitioner does not “serve the purposes of the[] rules and the
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`interests of justice.” F.R.E. 807. Exhibit 2016 should be excluded.
`
`III. EXHIBIT 2020 (WIKIPEDIA DEFINITION) IS INADMISSIBLE
`A Wikipedia definition last modified on January 18, 2016 is not probative of
`
`how a “logfile” would have been understood by a person of ordinary skill in the art
`
`in 1996-1997. (See Ex. 2020; F.R.E. 401-402.) As Finjan concedes, “Patent Owner
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`and its experts cite to Exhibit 2020 to demonstrate the understanding of a POSITA,
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`of the term ‘log file,’ during the relevant time frame.” (Paper 43 at 10.) Finjan,
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`therefore, offers exhibit 2020 to prove the truth of the matter asserted—the
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`definition of “log file.” (Paper 17 at 30-31; Ex. 2011 at ¶¶ 62, 107, 121.)
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`Accordingly, Finjan’s use of Wikipedia to show that the term “logfile” allegedly
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`applies to Swimmer during the relevant time period is irrelevant and hearsay.
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`F.R.E. 401-402, 802; Sony Corp. v. Yissum Research and Dev’t Co. of the Hebrew
`
`Univ. of Jerusalem, IPR2013-00219, Paper 16 at 41-42, 45-48, 51-52 (PTAB Sept.
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`3
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`Petitioner’s Reply
`IPR2016-00159
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`22, 2014) (excluding portions of a Wikipedia article and parts of expert testimony
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`based on the Wikipedia article on hearsay and authentication grounds).
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`Finjan offers no applicable exception to the hearsay rule. And while experts
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`may rely on inadmissible evidence, such reliance does not make underlying
`
`evidence admissible. Brose North Am. v. UUSI, LLC, IPR2014-00417, Paper 49 at
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`26 (PTAB July 20, 2015); F.R.E. 703.
`
`IV. EXHIBIT 2022 (TECHTERMS.COM DEFINITION) IS INADMISSIBLE
`An online definition last modified on April 14, 2010 is not probative of how
`
`“logfile” would be understood by a POSA in 1996-1997. (See Ex. 2022; F.R.E.
`
`401-402.) Finjan concedes that its expert relied on Exhibit 2022 to demonstrate the
`
`understanding of a POSITA during the relevant time frame. (Paper 43 at 11.)
`
`Finjan, therefore, offers Exhibit 2022 to prove the truth of the matter asserted—the
`
`definition of “log file.” (Paper 17 at 31.) Accordingly, Finjan’s use of the
`
`techterms.com entry to show that “logfile” allegedly applies to Swimmer during
`
`the relevant time period is irrelevant hearsay. F.R.E. 401-402, 802; Sony, IPR2013-
`
`00219, Paper 16 at 41-42, 45-48, 51-52.
`
`Finjan offers no applicable exception to the hearsay rule. And while experts
`
`may rely on inadmissible evidence, such reliance does not make underlying
`
`evidence admissible. Brose North Am. v. UUSI, LLC, IPR2014-00417, Paper 49 at
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`26 (PTAB July 20, 2015); F.R.E. 703.
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`4
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`
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`Petitioner’s Reply
`IPR2016-00159
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`V. EXHIBITS 2024 AND 2025 ARE INADMISSIBLE
`First, Dr. Medvidovic’s declaration from the Sophos district court litigation
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`
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`(Ex. 2024) does not have any tendency to make his opinions in this proceeding
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`more or less credible. F.R.E. 401-402. His own previous testimony—particularly
`
`testimony given under a different construction standard—cannot be probative of
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`his own current testimony; therefore, Exhibit 2024 is irrelevant. Id.
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`In addition, attorney-made infringement charts for the Websense litigation
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`do not make nexus or copying more or less likely. (Ex. 2025.) Finjan asserts the
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`charts are probative of “knowledge of the patented technology during development
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`of the accused products.” (Paper 43 at 15.) But Finjan’s infringement charts were
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`delivered to defendants when their products were accused of infringement, not
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`“during development of the accused products.” Thus, Exhibit 2025 is not probative
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`of Websense’s knowledge and is irrelevant to copying. F.R.E. 401-402.
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`Second, Finjan concedes that Exhibit 2024 is offered to show the meaning of
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`“database,” and Exhibit 2025 is offered to show that Websense’s products embody
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`the ’494 patent—i.e., both are offered for the truth of the matter asserted. (Paper 31
`
`at 8.) Finjan argues no hearsay exception, asserting instead that simply because its
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`expert cites the exhibits, they must “be considered and admitted.” (Paper 43 at 13.)
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`But reliance does not automatically make underlying evidence admissible. Brose,
`
`IPR2014-00417, Paper 49 at 26. Exhibits 2024 and 2025 should be excluded.
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`5
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`Petitioner’s Reply
`IPR2016-00159
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`
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`Dated: February 2, 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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`Respectfully submitted,
`COOLEY LLP
`
`By:
`
`
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`6
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`Petitioner’s Reply
`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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`
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`the type-volume limits of 37 C.F.R. § 42.24(c) because it contains 5 pages,
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`excluding the parts of this Response that are exempted by 37 C.F.R. § 42.24(a).
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`Dated: February 2, 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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`Respectfully submitted,
`COOLEY LLP
`
`By:
`
`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`Petitioner’s Reply
`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 February 2,
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`2017, a complete and entire copy of this PETITIONER’S REPLY IN SUPPORT
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`OF ITS MOTION TO EXCLUDE EVIDENCE 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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`
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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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`
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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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`
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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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