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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`PALO ALTO NETWORKS, INC.,
`Petitioner,
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`v.
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`FINJAN, INC.,
`Patent Owner.
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`____________________
`
`Case IPR2016-00159
`U.S. Patent No. 8,677,494
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`__________________________________________________________
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
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`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Patent Owner Finjan, Inc. (“Finjan”) objects under the Federal Rules of
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`Evidence and 37 C.F.R. § 42.64 to the admissibility of certain exhibits, identified
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`below, included in Petitioner’s Petition.
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`The Institution Decision issued on May 13, 2016. Paper No. 8. The Board
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`instituted trial for claims 1-6 and 10-15. Id. Finjan’s objections are timely under
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`37 C.F.R. § 42.64(b)(1). Finjan serves Petitioner these objections to provide
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`notice that Finjan will move to exclude the evidence as improper evidence.
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`I.
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`Dr. Aviel Rubin Declaration (Ex. 1002)
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`Finjan objects to the admissibility of Dr. Aviel Rubin’s Declaration (“Rubin
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`Declaration”) for at least the following reasons: Under FRE 702, Dr. Aviel
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`Rubin’s opinions are inadmissible because they are conclusory, do not disclose
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`underlying facts or data in support of his opinions, and are unreliable.
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`Additionally, Dr. Aviel Rubin is unqualified as an expert to provide technical
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`opinions of a person skilled in the art. See Ex. 1037 (Curriculum Vitae of Dr.
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`Aviel Rubin). As such, his opinions are inadmissible under FRE 702 and he lacks
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`personal knowledge under FRE 602. His opinions are also irrelevant, confusing,
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`and of minimal probative value under FRE 401, 402, and 403.
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`Moreover, Petitioner has failed to authenticate Martin through the Rubin
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`Declaration under FRE 901 and FRE 602. Specifically, Petitioner has failed to
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`establish that the Martin document referenced in the Rubin Declaration is what
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`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Petitioner claims it is, and has failed to authenticate the date by which Martin was
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`allegedly publicly accessible as a printed publication through the Rubin
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`Declaration. Finjan also objects because the Rubin Declaration is hearsay under
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`FRE 801 and inadmissible under FRE 802 and FRE 803. Accordingly, the Rubin
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`Declaration is not relevant under FRE 401 and is inadmissible under FRE 402 and
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`FRE 403.
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`II. Martin (Ex. 1047)
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`Finjan objects to the admissibility of Martin for at least the following
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`reasons: Petitioner has failed to authenticate Martin under FRE 901 and FRE 602.
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`Martin is not self-authenticating under FRE 901, not the original under FRE 1002,
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`and not a “duplicate” under FRE 1001(e) and FRE 1003. Specifically, Petitioner
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`has failed to establish that Martin is what Petitioner claims it is, and has failed to
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`authenticate the date by which Martin was allegedly publicly accessible as a
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`printed publication, either by examination of Martin on its face, or by Exhibit
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`1002.
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`To the extent that Petitioner attempts to rely on any date that appears on
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`Martin to establish public accessibility of Martin as a printed publication, the date
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`is hearsay under FRE 801 and is inadmissible under FRE 802 and FRE 803, and
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`further, the date has not been authenticated and is inadmissible under FRE 901 and
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`FRE 902. Additionally, under FRE 106, the complete version of Martin, in
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`2
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`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`fairness, ought to be considered. Further, Martin is improper prior art because it is
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`not an enabling disclosure.
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`Because of these deficiencies, Martin is not relevant under FRE 401 and is
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`inadmissible under FRE 402 and FRE 403 since Petitioner has failed to establish
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`that Martin is a prior art printed publication.
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`III. John Hawes Declaration (Ex. 1088)
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`Finjan objects to the John Hawes Declaration (“Hawes Declaration”) for at
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`least the following reasons: Under FRE 702, Mr. Hawes’ opinions are
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`inadmissible because they are conclusory, do not disclose underlying facts or data
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`in support of his opinions, and are unreliable. Additionally, Mr. Hawes is
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`unqualified as an expert to provide technical opinions of a person of skill in the art.
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`As such, his opinions are inadmissible under FRE 702 and he lacks personal
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`knowledge under FRE 602. Moreover, Petitioner has failed to authenticate
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`Swimmer through the Hawes Declaration under FRE 901. Specifically, Petitioner
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`has failed to establish that the Swimmer document referenced in the Hawes
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`Declaration is what Petitioner claims it is, and has failed to authenticate the date by
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`which Swimmer was allegedly publicly accessible as a printed publication through
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`the Hawes Declaration. Finjan also objects because the Hawes Declaration is
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`hearsay under FRE 801 and inadmissible under FRE 802 and FRE 803.
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`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Accordingly, the Hawes Declaration is not relevant under FRE 401 and is
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`inadmissible under FRE 402 and FRE 403.
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`IV. Swimmer (Ex. 1006)
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`Finjan objects to Swimmer for at least the following reasons: Petitioner has
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`failed to authenticate Swimmer under FRE 901 and FRE 602. Swimmer is not
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`self-authenticating under FRE 901, not the original under FRE 1002, and not a
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`“duplicate” under FRE 1001(e) and FRE 1003. Specifically, Petitioner has failed
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`to establish that Swimmer is what Petitioner claims it is. Finjan also objects on the
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`grounds that Swimmer is hearsay under FRE 801 and is inadmissible under FRE
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`802.
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`To the extent that Petitioner attempts to rely on any date that appears on
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`Swimmer to establish public accessibility of Swimmer as a printed publication, the
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`date is hearsay under FRE 801 and is inadmissible under FRE 802 and FRE 803,
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`and further, the date has not been authenticated and is inadmissible under FRE 901
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`and FRE 902. Additionally, under FRE 106, the complete version of Swimmer, in
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`fairness, ought to be considered. Further, Swimmer is improper prior art because it
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`is not an enabling disclosure.
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`Because of these deficiencies, Petitioner has failed to establish that
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`Swimmer is a prior art printed publication through the Hawes Declaration and
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`4
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`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`Swimmer. Accordingly, Swimmer is not relevant under FRE 401 and is
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`inadmissible under FRE 402 and FRE 403.
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`V. Exhibits 1004, 1005, 1007-1009, 1018-1022, 1024, 1026, 1028-1034, 1037-
`1046, 1048, 1050-1062, 1064-1066, 1068, 1070-1081, and 1085
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`Finjan objects to Exhibits 1004, 1005, 1007-1009, 1018-1022, 1024, 1026,
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`1028-1034, 1037-1046, 1048, 1050-1062, 1064-1066, 1068, 1070-1081, and 1085
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`as irrelevant under FRE 401 and inadmissible under FRE 402 and FRE 403
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`because they were not relied upon in Petitioner’s Petition.
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`Dated: May 27, 2016
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`(Case No. IPR2016-00159)
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`Respectfully submitted,
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`
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`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
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`Attorneys for Patent Owner
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`Patent Owner’s Objections to Evidence
`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 Objections to Evidence Under 37
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`C.F.R. § 42.64 was served on May 27, 2016, by filing this document through the
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`Patent Review Processing System as well as delivering via electronic mail upon
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`the following counsel of record for Petitioner:
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`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
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`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`
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`6
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`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com