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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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`CISCO SYSTEMS, INC.,
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`Petitioner,
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`v.
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`FINJAN, INC.,
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`Patent Owner.
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`Case IPR2018-00391
`U.S. Patent No. 7,647,633
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`PETITIONER’S MOTION TO EXCLUDE PATENT OWNER’S
`EVIDENCE UNDER 37 § 42.64
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DM2\9629189.1
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`1
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`I.
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.64(c), Petitioner Cisco Systems Inc.,
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`(“Petitioner”) moves to exclude the Hartstein Declaration (Exhibit 2012), and
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`Exhibits 2013- 2025, 2030, 2031 and 2035 referred to and introduced by the
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`Hartstein Declaration, which was relied on by Patent Owner Finjan, Inc. (“Patent
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`Owner”) in its Response Under 37 C.F.R. § 42.120 (Paper No. 12), filed
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`September 10, 2018. Petitioner timely objected to these exhibits on September 17,
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`2018 (Paper No. 14).
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`The Federal Rules of Evidence (“F.R.E.”) apply to this proceeding. See 37
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`C.F.R. § 42.62. Exercising its discretion, the Board may “exclude the … evidence
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`in their entirety, or alternatively, decline to consider the … related evidence.” CBS
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`Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 79, at 3
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`(PTAB Aug. 9, 2013).
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`Further, Exhibit 2012, which sets forth the declaration of Mr. Phil Hartstein,
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`is inadmissible because it is replete with hearsay, an evident lack of personal
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`knowledge (F.R.E. 602), improper opinion testimony (F.R.E. 702) and irrelevant,
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`non-probative material (F.R.E. 401, 403). Accordingly, Petitioner requests that all
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`of this exhibit be excluded from the trial of this matter.
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`DM2\9629189.1
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`2
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`II. ARGUMENT
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`Exhibit 2012 and the Exhibits Introduced Therein Should be Excluded
`on Multiple Grounds
`In its Response, Patent Owner relies on the testimony of Mr. Phil Hartstein
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`set forth in Exhibit 2012, to try to show secondary considerations of
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`nonobviousness. See Paper 12, at 36-45. The testimony is irrelevant, lacks
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`personal knowledge for key assertions, is replete with inadmissible hearsay and is
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`based on documents that have not been properly authenticated. For these reasons,
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`the Hartstein Declaration (Exhibit 2012) as well as the Finjan SEC Filings
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`(Exhibits 2013-2019) , the Gartner Report Documents (Exhibits 2020-2022), the
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`Proofpoint Documents (Exhibits. 2023-2025) and the Websense Documents
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`(Exhibits 2030, 2031, 2035) to which the Hartstein Declaration refers to and
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`introduces should be excluded.
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`1. Hartstein Declaration fails to show personal knowledge as required
`under F.R.E. 602.
`The Hartstein Declaration Exhibit 2012, because it does not introduce
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`evidence of Mr. Hartstein’s personal knowledge of the subject matter of the
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`testimony contained therein, is inadmissible under FRE 602. For example, the
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`Hartstein Declaration states that Mr. Hartstein is the “current” President of Finjan,
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`but it does not indicate when he became president of Finjan, when he became
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`DM2\9629189.1
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`employed by Finjan, his roles and responsibilities at Finjan or any other facts that
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`demonstrate that he has personal knowledge regarding the matters discussed in his
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`Declaration. In addition, the Hartstein Declaration contains testimony regarding
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`the terms of several Patent Owner license agreements, but the Hartstein
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`Declaration includes no facts that demonstrate that he has personal knowledge
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`regarding the license agreements.
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`2. The Hartstein Declaration is inadmissible under FRE 702
`Federal Rule of Evidence 702 permits admission of expert testimony from a
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`qualified expert only if “the expert’s scientific, technical, or other specialized
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`knowledge will help the trier of fact to understand the evidence or to determine a
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`fact in issue,” and if the testimony is based upon sufficient data and reliable
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`methods. Rule 702 further requires that an expert be qualified “by knowledge,
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`skill, experience, training, or education” in the relevant field. F.R.E. 702. Expert
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`testimony must be based on a reliable foundation and be relevant to the task at
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`hand. See Daubert v. Merrell Dow Pharm, Inc., 509 US 579, 597 (1993).
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`The Hartstein Declaration offers inadmissible expert testimony because the
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`opinions contained in his Declaration are conclusory, do not disclose supporting
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`facts or data, are biased and unreliable, and the Hartstein Declaration provides no
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`basis to support Mr. Hartstein’s qualifications as an expert. In one example,
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`Hartstein states “It invested over $65 million dollars in developing patented
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`DM2\9629189.1
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`technologies related to proactive content behavior inspection. Such investment
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`contributed to Finjan being awarded 29 U.S. issued patents and 27 issued foreign
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`patents.” Exhibit 2012 p. 2. There is no evidence of Mr. Hartstein’s expert
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`qualifications with respect to patents nor the relevant technology required to
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`provide such an opinion. Accordingly, Hartstein’s opinions are inadmissible under
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`FRE 702.
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`3. Finjan SEC Filings are inadmissable
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`Finjan SEC Filings under FRE 401, 402, and 403 are irrelevant, prejudicial,
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`misleading, and of minimal probative value. For example, none of these exhibits
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`identify the ‘633 Patent or otherwise explain how they are relevant to the ‘633
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`Patent. The Finjan SEC Filings are also inadmissible hearsay under FRE 801 and
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`802, and lack authentication under FRE 901.
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`4. Gartner Report Documents are inadmissible.
`The Gartner Report Documents under FRE 401, 402, and 403 are irrelevant,
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`prejudicial, misleading, and of minimal probative value. For example, none of
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`these exhibits identify the ‘633 Patent or otherwise explain how they are relevant
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`to the ‘633 Patent. The Gartner Report Documents are also inadmissible hearsay
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`under FRE 801 and 802, and lack authentication under FRE 901.
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`DM2\9629189.1
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`5. Proofpoint Documents
`The Proofpoint Documents under FRE 401, 402, and 403 are irrelevant,
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`prejudicial, misleading, and of minimal probative value. For example, none of
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`these exhibits identify the ‘633 Patent or otherwise explain how they are relevant
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`to the ‘633 Patent. The Proofpoint Documents are also inadmissible hearsay under
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`FRE 801 and 802, and lack authentication under FRE 901.
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`6. Websense Documents
`The Websense Documents under FRE 401, 402, and 403 are irrelevant,
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`prejudicial, misleading, and of minimal probative value. Patent Owner has failed
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`to provide any testimony as to what the Websense Documents are or why they are
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`being offered. The Websense Documents are also inadmissible hearsay under FRE
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`801 and 802, and lack authentication under FRE 901.
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`Respectfully submitted,
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`DUANE MORRIS LLP
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`BY: /Patrick D. McPherson/
`Patrick D. McPherson
`USPTO Reg. No. 46,255
`Duane Morris LLP
`505 9th Street NW, Suite 1000
`Washington, D.C. 20004
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`Dated: January 30, 2019
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`DM2\9629189.1
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`Patrick Craig Muldoon
`USPTO Reg No. 47,343
`505 9th Street, NW, Suite 1000
`Washington, DC 20004
`Telephone: 202-776-7840
`Facsimile: 202-776-7801
`PCMuldoon@duanemorris.com
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`Joseph A. Powers
`USPTO Reg No. 47,006
`30 South 17th Street
`Philadelphia, PA 19103-4196
`Telephone: 215-979-1842
`Facsimile: 215-689-3797
`JAPowers@duanemorris.com
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`DM2\9629189.1
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made of the Petitioner’s Motion to Exclude Evidence on the Attorneys
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`for Patent Owner as detailed below, dated: January 30, 2019, via Electronic Mail:
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`James Hannah: jhannah@kramerlevin.com
`Jeffrey H. Price: jprice@kramerlevin.com
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`/Patrick D. McPherson/
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`Patrick D. McPherson
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`USPTO Reg No. 46,255
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`DUANE MORRIS LLP
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`505 9th Street, NW, Suite 1000
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`Washington, DC 20004
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`Telephone: 202-776-5214
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`Facsimile: 202-776-7801
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`PDMcPherson@duanemorris.com
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`DM2\9629189.1
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`1
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