`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00391
`U.S. Patent No. 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`
`Patent Owner Finjan, Inc., (“Patent Owner”) opposes Petitioner, Cisco
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`Systems, Inc.’s, (“Petitioner”) Motion to Exclude (Paper 23, “Motion”). The
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`Board should deny Petitioner’s request to exclude Ex. 2012 and the exhibits
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`referenced therein, including Exhibits 2013–2025, 2030, 2031, and 2035.
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`I. THE HARTSTEIN DECLARATION IS ADMISSIBLE
`A. Mr. Hartstein Demonstrated Personal Knowledge of Finjan’s
`Licensing Practices
`
`Petitioner incorrectly asserts that the Hartstein Declaration (Ex. 2012) “does
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`not introduce evidence of Mr. Hartstein’s personal knowledge of the subject matter
`
`of the testimony contained therein.” Motion at 3–4. To the contrary, Mr. Hartstein
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`testified that he is “the current president of Finjan” and that through that position
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`he is “familiar with Finjan’s licensing practices and the licensing of Finjan’s
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`world-wide patent portfolio.” Ex. 2012, ¶¶ 3–4. Accordingly, Mr. Hartstein has
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`the requisite personal knowledge to testify about licenses taken for the ’633 Patent.
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`Petitioner’s argument regarding Mr. Hartstein’s knowledge rings especially hollow
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`considering that Cisco cross-examined Mr. Hartstein and decided not to enter the
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`transcript into evidence.
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`Further, in response to Petitioner’s objections, Patent Owner served Ex.
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`2036, “Supplemental Declaration of Phil Hartstein in Support of Patent Owner’s
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`Response.” (“Supplemental Declaration”). In the Supplemental Declaration, Mr.
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`1
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`Hartstein testified that as part of his responsibilities and “in connection with
`
`preparing [his] Declaration, he “reviewed Finjan’s business records, maintained in
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`the ordinary course of Finjan’s regular business activities.” Supplemental
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`Declaration, ¶ 6. For the same reasons, Mr. Hartstein testified that he reviewed
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`“Finjan’s SEC filings” (Exs. 2013–2019), the “Gartner Magic Quadrant reports”
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`(Exs. 2020–2022). Id. at ¶¶ 7, 9. Mr. Hartstein also reviewed business records
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`relating to patent licenses entered into prior to Mr. Hartstein assuming the role of
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`President, all of which were “maintained in the ordinary course of Finjan’s
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`business,” and that he is currently “involved in ensuring that Finjan complies with
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`any ongoing obligations under these licenses.” Id. at ¶¶ 7–8, 10–14. Mr. Hartstein
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`further testified that he “was the President of Finjan during the negotiations for,
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`and execution of, each of [several other] licenses” and thus has personal
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`knowledge of the same. Id. at ¶ 15.
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`Accordingly, Petitioner’s argument that Mr. Hartstein lacks the personal
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`knowledge of the subject matter of his testimony is baseless, and Ex. 2012 should
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`not be excluded under F.R.E. 603.
`
`B. Rule 702 is Inapplicable Because Mr. Hartstein is Not an Expert
`Witness
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`Petitioner argues that the “Hartstein Declaration offers inadmissible expert
`
`testimony.” Motion at 4. However, Mr. Hartstein testified to facts and was not,
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`2
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`therefore, an expert witness. Indeed, while Petitioner identifies the following
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`statement as allegedly being unsupported expert testimony, it is a verifiable factual
`
`statement, not an opinion:
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`“It invested over $65 million dollars in developing patented
`technologies related to proactive content behavior inspection. Such
`investment contributed to Finjan being awarded 29 U.S. issued patents
`and 27 issued foreign patents.”
`
`Id. Indeed, Mr. Hartstein testified that he “reviewed Finjan’s business records,
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`maintained in the ordinary course of Finjan’s regular business activities, including
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`documentation of and relating to (a) Finjan’s research and development efforts
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`since its founding in 1997; (b) Finjan’s 29 U.S. issued patents and 27 issued
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`foreign patents.” Supplemental Declaration, ¶ 6.
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`Accordingly, Ex. 2012 should not be excluded under F.R.E. 702.
`
`II. THE SEC EXHIBITS ARE ADMISSIBLE
`Petitioner’s argument that Exhibits 2013–2019 (“the SEC exhibits”) should
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`be excluded under FRE 401, 402, and 403 is meritless. See Motion at 5. For
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`example, the SEC exhibits support at least Mr. Hartstein’s testimony regarding the
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`“non-exhaustive list of Finjan licensees that received a license to the ‘633 Patent
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`after the July 5, 2011 issuance.” Ex. 2012, ¶ 7. The SEC exhibits are therefore
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`3
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`relevant under FRE 401, 402, and 403 because the “ha[ve] a tendency to make a
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`fact more or less probable than it would be without the evidence.” FRE 401.
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`The SEC exhibits are not hearsay because they fall under the business
`
`records exception of hearsay. Fed. R. Evid. 803(6)(B)-(C) (“the record was kept in
`
`the course of a regularly conducted activity of …[an] organization… [and] making
`
`the record was a regular practice of that activity.”).
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`Furthermore, the SEC exhibits have been properly authenticated. See, e.g.
`
`Supplemental Declaration, ¶ 7; Ex. 2037 (“Price Declaration”), ¶¶ 5–11.
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`Accordingly, Patent Owner has come forward with “evidence sufficient to support
`
`a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901. The
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`Federal Rules of Evidence specifically provide that such evidence may come in the
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`form on “[t]estimony of a [w]itness with [k]nowledge . . . that an item is what it is
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`claimed to be.” Id.; see also United States v. Turner, 718 F.3d 226, 232 (3d Cir.
`
`2013) (“[t]he standard for authenticating evidence is slight and may be satisfied by
`
`evidence sufficient to support a finding that the item is what the proponent claims
`
`it is.”) (internal quotations and citation omitted).
`
`III. THE GARTNER REPORT DOCUMENTS ARE ADMISSIBLE
`Petitioner’s argument that Exhibits 2020–2022 (“the Gartner Reports”)
`
`should be excluded under FRE 401, 402, and 403 is meritless. See Motion at 5.
`
`For example, the Gartner Reports support at least Mr. Hartstein’s testimony that
`
`
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`4
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`licensees of the ‘633 Patent are “competitors in the computer security field.” Ex.
`
`2012, ¶ 12. The Gartner Reports are therefore relevant under FRE 401, 402, and
`
`403 because the “ha[ve] a tendency to make a fact more or less probable than it
`
`would be without the evidence.” FRE 401.
`
`The Gartner Reports are not hearsay because Patent Owner is not using these
`
`exhibits for the truth of the matter asserted. Petitioner seems to concede this fact by
`
`failing to indicate what portion is purportedly hearsay. Even if they are hearsay,
`
`they fall under the hearsay exception concerning market reports. Fed. R. Evid.
`
`803(17).).
`
`Furthermore, the Gartner Reports have been properly authenticated. See,
`
`e.g., Supplemental Declaration, ¶ 9; Price Declaration, ¶¶ 12–14. Accordingly,
`
`Patent Owner has come forward with “evidence sufficient to support a finding that
`
`the item is what the proponent claims it is.” Fed. R. Evid. 901.
`
`IV. THE PROOFPOINT & WEBSENSE DOCUMENTS ARE
`ADMISSIBLE
`
`Petitioner’s argument that Exhibits 2023–2025 (“the Proofpoint
`
`Documents”) and Exhibits 2030, 2031, and 2035 (“the Websense Documents”)
`
`should be excluded under FRE 401, 402, and 403 is meritless. See Motion at 6.
`
`Proofpoint documents support Patent Owner’s argument that the “Proofpoint
`
`products practice the inventions disclosed in the ‘633 Patent and Proofpoint has
`
`
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`5
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`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`obtained significant revenues from the sales of those products and demonstrate that
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`the ‘633 Patent is not obvious.” Patent Owner Response at 43–44. The Websense
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`documents support Patent Owner’s arguments that licensee Websense practices
`
`and derives substantial revenue from products that practice the ‘633 Patent. Id. at
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`41–42. These exhibits are therefore relevant under FRE 401, 402, and 403 because
`
`the “ha[ve] a tendency to make a fact more or less probable than it would be
`
`without the evidence.” FRE 401.
`
`Exhibits 2023 and 2024 are the SEC filings of Proofpoint, Inc., which are
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`not hearsay because they are not being offered for the truth of the matter asserted.
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`Instead, Finjan relies on Exhibits 2023 and 2024 to demonstrate the increasing
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`need for protection against unknown malicious content. Patent Owner Response at
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`42-44. Even assuming that they are, they are not inadmissible hearsay because
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`they fall under the commercial publication and business records exceptions. Johns
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`Manville Corp. v. Knauf Insulation, Inc., Case IPR 2016-00130, Paper 35 at 23
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`(P.T.A.B. May 8, 2017) (finding that corporate annual reports are authentic and are
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`not inadmissible hearsay because they fall within the commercial publication and
`
`the business records exceptions of the Federal Rules of Evidence). They are also
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`properly authenticated because they are government filings. Id.
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`Exhibit 2025, which is a press release from Proofpoint, Inc., is also not
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`hearsay because it is not being offered for the truth of the matter asserted. Rather,
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`6
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`Patent Owner cites to Exhibit 2025 to indicate that Proofpoint’s revenues were
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`$265.4 million. Patent Owner Response at 43; EMC Corp. v. PersonalWeb Techs.,
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`LLC, IPR2013-00087, Paper 69 at 43 (P.T.A.B. May 15, 2014) (“If the
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`significance of an offered statement lies solely in the fact that it was made, no issue
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`is raised as to the truth of anything asserted, and the statement is not hearsay.”)
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`(citation omitted).
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`Exhibits 2030, 2031, and 2035 are also not hearsay because they are not
`
`being offered for the truth of the matter asserted. Rather, Patent Owner cites to
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`Exhibit 2030 to demonstrate that Websense practiced the ‘633 Patent, Exhibit 2031
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`to demonstrate the Websense advertised the technology that practices the ‘633
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`Patent, and Exhibit 2035 to indicate that Websense’s revenues were $361.4 million
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`in 2012. Patent Owner Response at 42.
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`Furthermore, the Proofpoint and Websense Documents have been properly
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`authenticated. See, e.g., Price Declaration, ¶¶ 15–20. Accordingly, Patent Owner
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`has come forward with “evidence sufficient to support a finding that the item is
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`what the proponent claims it is.” Fed. R. Evid. 901.
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`V. CONCLUSION
`For the foregoing reasons, the Board should deny Petitioner’s request to
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`exclude Ex. 2012 and the exhibits referenced therein, including Exhibits 2013–
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`2025, 2030, 2031, and 2035.
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`
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`7
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`
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`Dated: February 13, 2019
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`
`Respectfully submitted,
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`
`
`
`
`
`
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`(Case No. IPR2018-00391) Attorneys for Patent Owner
`Finjan, Inc.
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`8
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made on the Petitioner as detailed below.
`
`Date of service February 13, 2019
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`Manner of service Electronic Mail (PDMcPherson@duanemorris.com;
`PCMuldoon@duanemorris.com;
`japowers@duanemorris.com)
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`Documents served PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE
`
`Persons Served Patrick D. McPherson
`Patrick Muldoon
`Joseph A. Powers
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`
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`
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`/James Hannah/
`James Hannah
`Registration No. 56,369
`Counsel for Finjan
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`9
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