`
`
`
`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
`Patent No. 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE PETITIONER’S EVIDENCE
`
`
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Motion to Exclude (Paper No. 19, “Motion”) should be
`
`granted for the reasons set forth in the Motion and below.
`
`II. ARGUMENT
`
`A. The Board Should Exclude the Web Security & Commerce,
`O’Reilly & Associates, Inc. Garfinkel and Spafford, June 1997
`(“Exhibit 1029”)
`The Reply improperly introduced Exhibit 1029, which is inadmissible under
`
`37 C.F.R. § 42.61 and is properly subject to exclusion. Motion at 1–2. Petitioner
`
`does not dispute that such evidence could have been included in its Petition.
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Petitioner’s Evidence
`
`Under 37 § 42.64 (Paper No. 27, “Opp.”) at 2. Therefore, Exhibit 1029 should be
`
`excluded.
`
`B.
`
`The Board Should Exclude the Declaration of Dr. Paul Clark
`(Exhibit 1003, “Clark Declaration”)
`The Clark Declaration should be excluded because his opinions are
`
`conclusory, do not disclose underlying facts or data in support of his opinions, and
`
`are unreliable. Motion at 2. Petitioner merely hand waves past this requirement by
`
`claiming that “Clark [sic] and includes a citation of the references relied on, as well
`
`as pinpoint cites to the references in the body of his declaration.” Opp. at 2.
`
`Petitioner points to no evidence or citations to Dr. Clark’s declaration. Nor does
`
`Petitioner dispute Patent Owner’s arguments with regard to Dr. Clark’s failure to
`
`1
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`provide the basis for his conclusory statement that “Hanson describes and POSA
`
`would have understood that the security program is attached (tagged) to the data
`
`packets (executable code) as a separate object that does not modify the data
`
`packets (executable code).” Motion at 3; Clark Declaration at 64 n.5. Dr. Clark
`
`fails to explain the basis for his conclusion, including what “attach” or “tag” mean
`
`in relation to a security program to data packets. This failure highlights the fact
`
`that the Clark Declaration is not based on a proper analysis, and should be
`
`excluded. Fed. R. Evid. 401–402, 702.
`
`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner Motion to Exclude should be
`
`granted.
`
`Dated: February 20, 2019
`
`
`(Case No. IPR2018-00391)
`
`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
`
`Attorneys for Patent Owner
`
`2
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`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 Reply in Support of its Motion to
`
`Exclude was served on February 20, 2019, by filing this document through the
`
`PTAB E2E system as well as delivering via electronic mail upon the following
`
`counsel of record for Petitioner:
`
`Patrick McPherson (PDMcPherson@duanemorris.com);
`Patrick Muldoon (PCMuldoon@duanemorris.com);
`Joseph A. Powers (JAPowers@duanemorris.com)
`
`/James Hannah/
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
`
`3
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
