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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
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`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00391
`Patent No. 7,647,633
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`__________________________________________________________
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`PATENT OWNER’S MOTION TO EXCLUDE PETITIONER’S EVIDENCE
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`
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`Patent Owner’s Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner Finjan, Inc. (“Finjan”) hereby
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`moves to exclude the following exhibits submitted in this proceeding by Petitioner
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`Cisco Systems, Inc. (“Cisco”): Exhibit 1029 (Web Security & Commerce, O’Reilly
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`& Associates, Inc. Garfinkel and Spafford, June 1997), Exhibit 1003 (Declaration
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`of Dr. Paul Clark). On June 19, 2018, Finjan timely filed its objections to the
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`evidence in Petitioner’s Petition. Paper No. 9. On December 17, 2018, Patent
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`Owner timely filed its objections to evidence in Petitioner’s Reply. Paper No. 17.
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`The Board should grant Patent Owner’s Motion to Exclude for the reasons set forth
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`below.
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`II. ARGUMENT
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`A. The Board Should Exclude the Web Security & Commerce,
`O’Reilly & Associates, Inc. Garfinkel and Spafford, June 1997
`(“Exhibit 1029”)
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`The Reply improperly introduced Exhibit 1029, which is inadmissible under
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`37 C.F.R. § 42.61 and is properly subject to exclusion. Belden Inc. v. Berk-Tek
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`LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (“a party may move to exclude
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`evidence, whether as improper under the response-only regulation, under the Trial
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`Practice Guide’s advice, or on other grounds.”)(citation omitted). This belated
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`submission is inadmissible under FRE 403 and should be excluded because it is
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`improper and highly prejudicial for Petitioner to introduce new evidence in its
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`1
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`
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`Patent Owner’s Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`Reply when it should have been included in its petition. “[T]he expedited nature of
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`IPRs bring with it an obligation for petitioners to make their case in their petition
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`to institute” unlike in district courts where “parties have greater freedom to revise
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`and develop their arguments over time . . . .” Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); see also Scotts Co. v.
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`Encap, LLC, IPR2013-00110, Paper 79 at 5-6 (P.T.A.B. June 24, 2014) (granting
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`motion to exclude materials that were outside of the proper scope of a reply, where
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`the new evidence could have been included with an earlier motion).
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`Therefore, Exhibit 1029 should be excluded.
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`B.
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`The Board Should Exclude the Declaration of Dr. Paul Clark
`(Exhibit 1003, “Clark Declaration”)
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`The Clark Declaration should be excluded because his opinions are
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`conclusory, do not disclose underlying facts or data in support of his opinions, and
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`are unreliable. Fed. R. Evid. 702; Intellectual Ventures Mgmt., LLC v. Xilinx, Inc.,
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`Case IPR2012-00020, Paper 34 at 10 (P.T.A.B. Feb. 11, 2014) (stating that an
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`expert’s “conclusory testimony is entitled to little or no weight.”)(citing 37 C.F.R.
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`§ 42.65(a)); Tietex Int’l, Ltd. v. Precision Fabrics. Grp., Inc., Case IPR2014-
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`01248, Paper 39 at 17 (P.T.A.B. Jan. 27, 2016) (a lack of objective support for an
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`expert opinion “may render the testimony of little probative value in [a
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`patentability] determination.”) (quoting Ashland Oil, Inc. v. Delta Resins &
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`Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).
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`2
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`Patent Owner’s Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`Dr. Clark’s opinion does not near the evidentiary requirement for an expert
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`opinion in IPR proceedings because he fails to provide the underlying facts or data
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`for his conclusory assertions. For example, Dr. Clark claims that “Hanson
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`describes and POSA would have understood that the security program is attached
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`(tagged) to the data packets (executable code) as a separate object that does not
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`modify the data packets (executable code),” but fails to explain the basis for this
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`statement, such as what it means to “attach” or “tag” a security program to data
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`packets. Clark Declaration at 64, n.5.
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`Accordingly, because the Clark Declaration is not based on a proper
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`analysis, his opinions are not based on sufficient facts or data and are thus
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`unreliable. The Clark Declaration is not credible, irrelevant, and cannot assist the
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`trier of fact and thus should be afforded no weight. Fed. R. Evid. 401-402, 702.
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`Therefore, the Board should exclude the Clark Declaration.
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`III. CONCLUSION
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`For the foregoing reasons, Patent Owner Motion to Exclude should be
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`granted.
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`3
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`Patent Owner’s Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`Respectfully submitted,
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`
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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
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`Attorneys for Patent Owner
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`Dated: January 30, 2019
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`(Case No. IPR2018-00391)
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`4
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`
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`Patent Owner’s Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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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 Motion to Exclude was served on
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`January 30, 2019, by filing this document through the PTAB E2E system as well
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`as delivering via electronic mail upon the following counsel of record for
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`Petitioner:
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`Patrick McPherson (PDMcPherson@duanemorris.com);
`Patrick Muldoon (PCMuldoon@duanemorris.com);
`Joseph A. Powers (JAPowers@duanemorris.com)
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`/James Hannah/
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
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`5
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