UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00159
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00159
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Patent Owner Finjan, Inc. (“Finjan”) objects under the Federal Rules of
`
`Evidence and 37 C.F.R. § 42.64 to the admissibility of certain exhibits, identified
`
`below, included in Petitioner’s Petition.
`
`The Institution Decision issued on May 13, 2016. Paper No. 8. The Board
`
`instituted trial for claims 1-6 and 10-15. Id. Finjan’s objections are timely under
`
`37 C.F.R. § 42.64(b)(1). Finjan serves Petitioner these objections to provide
`
`notice that Finjan will move to exclude the evidence as improper evidence.
`
`I.
`
`Dr. Aviel Rubin Declaration (Ex. 1002)
`
`Finjan objects to the admissibility of Dr. Aviel Rubin’s Declaration (“Rubin
`
`Declaration”) for at least the following reasons: Under FRE 702, Dr. Aviel
`
`Rubin’s opinions are inadmissible because they are conclusory, do not disclose
`
`underlying facts or data in support of his opinions, and are unreliable.
`
`Additionally, Dr. Aviel Rubin is unqualified as an expert to provide technical
`
`opinions of a person skilled in the art. See Ex. 1037 (Curriculum Vitae of Dr.
`
`Aviel Rubin). As such, his opinions are inadmissible under FRE 702 and he lacks
`
`personal knowledge under FRE 602. His opinions are also irrelevant, confusing,
`
`and of minimal probative value under FRE 401, 402, and 403.
`
`Moreover, Petitioner has failed to authenticate Martin through the Rubin
`
`Declaration under FRE 901 and FRE 602. Specifically, Petitioner has failed to
`
`establish that the Martin document referenced in the Rubin Declaration is what
`
`1
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Petitioner claims it is, and has failed to authenticate the date by which Martin was
`
`allegedly publicly accessible as a printed publication through the Rubin
`
`Declaration. Finjan also objects because the Rubin Declaration is hearsay under
`
`FRE 801 and inadmissible under FRE 802 and FRE 803. Accordingly, the Rubin
`
`Declaration is not relevant under FRE 401 and is inadmissible under FRE 402 and
`
`FRE 403.
`
`II. Martin (Ex. 1047)
`
`Finjan objects to the admissibility of Martin for at least the following
`
`reasons: Petitioner has failed to authenticate Martin under FRE 901 and FRE 602.
`
`Martin is not self-authenticating under FRE 901, not the original under FRE 1002,
`
`and not a “duplicate” under FRE 1001(e) and FRE 1003. Specifically, Petitioner
`
`has failed to establish that Martin is what Petitioner claims it is, and has failed to
`
`authenticate the date by which Martin was allegedly publicly accessible as a
`
`printed publication, either by examination of Martin on its face, or by Exhibit
`
`1002.
`
`To the extent that Petitioner attempts to rely on any date that appears on
`
`Martin to establish public accessibility of Martin as a printed publication, the date
`
`is hearsay under FRE 801 and is inadmissible under FRE 802 and FRE 803, and
`
`further, the date has not been authenticated and is inadmissible under FRE 901 and
`
`FRE 902. Additionally, under FRE 106, the complete version of Martin, in
`
`2
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`fairness, ought to be considered. Further, Martin is improper prior art because it is
`
`not an enabling disclosure.
`
`Because of these deficiencies, Martin is not relevant under FRE 401 and is
`
`inadmissible under FRE 402 and FRE 403 since Petitioner has failed to establish
`
`that Martin is a prior art printed publication.
`
`III. John Hawes Declaration (Ex. 1088)
`
`Finjan objects to the John Hawes Declaration (“Hawes Declaration”) for at
`
`least the following reasons: Under FRE 702, Mr. Hawes’ opinions are
`
`inadmissible because they are conclusory, do not disclose underlying facts or data
`
`in support of his opinions, and are unreliable. Additionally, Mr. Hawes is
`
`unqualified as an expert to provide technical opinions of a person of skill in the art.
`
`As such, his opinions are inadmissible under FRE 702 and he lacks personal
`
`knowledge under FRE 602. Moreover, Petitioner has failed to authenticate
`
`Swimmer through the Hawes Declaration under FRE 901. Specifically, Petitioner
`
`has failed to establish that the Swimmer document referenced in the Hawes
`
`Declaration is what Petitioner claims it is, and has failed to authenticate the date by
`
`which Swimmer was allegedly publicly accessible as a printed publication through
`
`the Hawes Declaration. Finjan also objects because the Hawes Declaration is
`
`hearsay under FRE 801 and inadmissible under FRE 802 and FRE 803.
`
`3
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Accordingly, the Hawes Declaration is not relevant under FRE 401 and is
`
`inadmissible under FRE 402 and FRE 403.
`
`IV. Swimmer (Ex. 1006)
`
`Finjan objects to Swimmer for at least the following reasons: Petitioner has
`
`failed to authenticate Swimmer under FRE 901 and FRE 602. Swimmer is not
`
`self-authenticating under FRE 901, not the original under FRE 1002, and not a
`
`“duplicate” under FRE 1001(e) and FRE 1003. Specifically, Petitioner has failed
`
`to establish that Swimmer is what Petitioner claims it is. Finjan also objects on the
`
`grounds that Swimmer is hearsay under FRE 801 and is inadmissible under FRE
`
`802.
`
`To the extent that Petitioner attempts to rely on any date that appears on
`
`Swimmer to establish public accessibility of Swimmer as a printed publication, the
`
`date is hearsay under FRE 801 and is inadmissible under FRE 802 and FRE 803,
`
`and further, the date has not been authenticated and is inadmissible under FRE 901
`
`and FRE 902. Additionally, under FRE 106, the complete version of Swimmer, in
`
`fairness, ought to be considered. Further, Swimmer is improper prior art because it
`
`is not an enabling disclosure.
`
`Because of these deficiencies, Petitioner has failed to establish that
`
`Swimmer is a prior art printed publication through the Hawes Declaration and
`
`4
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Swimmer. Accordingly, Swimmer is not relevant under FRE 401 and is
`
`inadmissible under FRE 402 and FRE 403.
`
`V. Exhibits 1004, 1005, 1007-1009, 1018-1022, 1024, 1026, 1028-1034, 1037-
`1046, 1048, 1050-1062, 1064-1066, 1068, 1070-1081, and 1085
`
`Finjan objects to Exhibits 1004, 1005, 1007-1009, 1018-1022, 1024, 1026,
`
`1028-1034, 1037-1046, 1048, 1050-1062, 1064-1066, 1068, 1070-1081, and 1085
`
`as irrelevant under FRE 401 and inadmissible under FRE 402 and FRE 403
`
`because they were not relied upon in Petitioner’s Petition.
`
`Dated: May 27, 2016
`
`(Case No. IPR2016-00159)
`
`Respectfully submitted,
`
`
`
`
`
`/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
`
`Attorneys for Patent Owner
`
`5
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Objections to Evidence Under 37
`
`C.F.R. § 42.64 was served on May 27, 2016, by filing this document through the
`
`Patent Review Processing System as well as delivering via electronic mail upon
`
`the following counsel of record for Petitioner:
`
`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
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`
`
`
`6
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
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