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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.,
`Petitioner,
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`v.
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`FINJAN, INC.,
`Patent Owner
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`Case IPR2018-00391
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`Patent 7,647,633
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION TO EXCLUDE EVIDENCE
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`
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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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`
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`Patent Owner Finjan, Inc.’s (“Finjan”) Opposition to Petitioner Cisco Systems,
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`Inc.’s (“Petitioner”) Motion to Exclude (“Opp.”) fails to set forth any viable basis to
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`admit the Hartstein Declaration (Exhibit 2012) (“Declaration”) or Exhibits 2013-
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`2025, 2030, 2031 or 2035. All such evidence should be excluded in this proceeding.
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`I.
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`The Declaration
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`Hartstein’s role as president does not imbue him with knowledge of all aspects
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`of Finjan’s licensing activities, and Finjan fails to set forth any other foundation as to
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`how Hartstein himself perceived the facts underlying his statements. See Ward v. First
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`Fed. Sav. Bank, 173 F.3d 611, 617-18 (7th Cir. 1999) (bank VP’s affidavit
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`inadmissible under R. 602 because it lacked the “source of [his] awareness”); Fed. R.
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`Evid. 602, advisory committee’s note (rule “requir[es] that a witness who testifies to
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`a fact which can be perceived by the senses must have had an opportunity to observe,
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`and must have actually observed the fact.”).
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`Finjan effectively concedes the Declaration was inadequate because it offers a
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`“supplemental” declaration from Hartstein (“Supp. Decl.”) purporting to cure the
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`Declaration’s inadequacies. However, the Supplemental Declaration still fails to state
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`how Hartstein actually has personal knowledge of any of the matters set forth therein.
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`Hartstein bases most of his declaration on his review of documents. Besides being a
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`mere repeater of hearsay, a person lacks personal knowledge where “the extent of his
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`knowledge . . . is limited to the mere text of [documents]” and “is equally ascertainable
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`by anyone presented with the [documents] to read.” Aspex Eyewear, Inc. v. E’Lite
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`Optik, Inc., 127 Fed. App’x 493, 497 (Fed. Cir. 2005).
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`Finjan further claims that Rule 702 is inapplicable in this context, and that
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`Hartstein’s claim that Finjan’s investment “contributed to” Finjan’s securing 29
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`domestic patents and 27 foreign patents is a “verifiable factual statement.” Opp. at 3.
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`But the scientific and legal considerations at play when the USPTO is deciding
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`whether to award a patent are examples of “specialized knowledge” beyond that of the
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`layperson, and which require a showing of adequate foundation under Rule 702.
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`Moreover, even if Hartstein’s claim is not an expert opinion, Finjan offers no
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`explanation as to how his lay opinion is helpful to the trier of fact—a necessity under
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`Rule 701(b). Hartstein’s theory as to the cause of Finjan’s receipt of patents sheds no
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`light on any issue relevant in this case, and it is excludable on that ground as well.
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`II.
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`SEC Exhibits
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`Petitioner contended that the SEC 8-K forms Finjan proffers make no reference
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`to the ‘633 Patent or otherwise explain how they are relevant to the ‘633 Patent. Finjan
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`has failed to refute this point, offering no explanation as to how any claim within the
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`‘633 Patent shares any nexus with the license agreements referenced in the SEC 8-Ks.
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`Finjan fails to note that in order to be relevant, evidence must not only make a fact
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`“more or less probable,” but also that the fact must be “of consequence in determining
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`the action.” Fed. R. Evid. 401(b). Finjan has not drawn any connection between the
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`claims in the ’633 Patent, the licenses referenced in the Declaration, and the matters
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`relevant in this proceeding, making the 8-Ks irrelevant. Their admission would also,
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`therefore, be unnecessarily cumulative. See Fed. R. Evid. 403.
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`Finjan likewise fails to satisfy the necessary elements of the business records
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`exception. A document is a business record only if it is “made at or near the time by
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`– or from information transmitted by – someone with knowledge.” Fed. R. Evid.
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`803(6)(A). Hartstein’s Supplemental Declaration refers to “Finjan’s officers,” but
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`leaves out any indication as to who these officers are, what their role(s) were with
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`respect to the 8-Ks, or their knowledge of the 8-Ks’ contents. While an 8-K has the
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`potential to be a business record, it may be admitted “only after” a witness “la[ys] a
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`foundation for its admission.” S.E.C. v. Jasper, 678 F.3d 1116, 1122 (9th Cir. 2012);
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`see also U.S. v. Foster, 829 F. Supp. 2d 354, 364 (W.D. Va. 2011) (excluding proffered
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`“business records” where authenticating witness did not, inter alia, testify as to the
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`document makers’ knowledge or identity). Hartstein has not done so.
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`III. Gartner Report Documents
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`The Opposition sets forth no basis to admit the Gartner Reports. These
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`documents, which Finjan claims support Hartstein’s assertion that Finjan’s licensees
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`are competitors, do not actually say anything about the competitiveness by and
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`between the licensees. They do nothing to make any fact more or less likely.
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`Even if they did, the documents are blatant examples of hearsay. These are not
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`documents produced by Finjan or Petitioner, but rather by a third party with no
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`involvement in this matter. Finjan claims they are admissible under the “market
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`reports” exception, yet Finjan fails to provide any meaningful foundation that these
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`documents are relied on by other firms within Finjan’s industry or the general public
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`(beyond a token recitation in the Supplemental Declaration). Even if these reports
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`were relied on by a particular industry, admissibility under the “market reports”
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`exception must be based on “the motivation of the compiler to foster reliance by being
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`accurate.” Fed. R. Evid. 803(17), advisory committee’s note. These reports all end
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`with a disclaimer: “Gartner disclaims all warranties as to the accuracy, completeness
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`or adequacy of such information.” They lack the necessary indicia of reliability.
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`Finjan attempts to salvage these documents by claiming they are not being
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`offered for the truth of the matter asserted. However, they are absolutely being used
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`to prove the truth of the matter asserted therein. Finjan claims the documents state that
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`its licensees are competitors in the computer security field. They offer the documents
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`to support Hartstein’s assertion that Finjan’s licensees are competitors in the computer
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`security field. There can be no clearer example of a statement being offered for the
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`truth of the matter asserted. These reports are inadmissible, irrelevant hearsay.
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`IV. Proofpoint & Websense Documents
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`None of these documents are admissible. With respect to the Proofpoint and
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`Websense documents offered to show those companies’ revenues (Exhibits 2025 and
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`2035), Finjan is using them to prove the truth of the matter asserted. They want to
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`prove the companies’ revenues and are using the proffered exhibits, which contain
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`revenue figures, as proof.
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`Finjan’s documents offered to show Websense and Proofpoint “practiced the
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`‘633 Patent” (Exhibits 2023-25, 2030, 2031) are also offered for the truth of the matter
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`asserted. Although Finjan fails to state what portion(s) of these voluminous
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`documents are meant to serve as support for the Declaration, the truth of their contents
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`is clearly imperative to their usefulness. If the documents did not truthfully state that
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`Websense and Proofpoint’s products rely on a claim within the ‘633 Patent, then the
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`documents would be wholly irrelevant and meaningless to Finjan’s case.
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`Finjan’s reliance on Exhibits 2023 and 2024 “to demonstrate the increasing need
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`for protection against unknown malicious content” also relies on the truthfulness of
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`the matters asserted therein. If the statements Finjan believes are supportive of its
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`case—whatever they are—were written in the converse, they would disprove Finjan’s
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`claim. The truthfulness of the matters asserted is thus key to the exhibits’ relevance.
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`Finally, Finjan’s unsupported characterizations of these exhibits as “market
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`reports” or “business records” is not sufficient to permit their admission into the
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`record. Finjan has the burden of showing its proffered evidence is admissible. Owens
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`v. Republic of Sudan, 864 F.3d 751, 786 (D.C. Cir. 2017) (“the adversarial process
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`properly places the burden of admissibility upon the interested party”); U.S. v.
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`Jackson, 636 F.3d 687, 695 (5th Cir. 2011) (quoting U.S. v. Fullwood, 342 F.3d 409,
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`412 (5th Cir. 2003)) (“The proponent has the burden of establishing, by a
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`preponderance of the evidence, that the pertinent admissibility requirements are
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`met.”). Finjan has not offered any foundational evidence to back up its claims that any
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`of these exhibits qualify under any exception—only bare-bones, unadorned labels.
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`Date: February 20, 2019
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`Respectfully submitted,
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`DUANE MORRIS, LLP
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` /Patrick D. McPherson/
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`Patrick D. McPherson
`Registration No. 46,255
`505 9th Street, NW, Suite 1000
`Washington, D.C. 20004
`Telephone: (202) 776-7000
`Facsimile: (202) 776-7801
`PDMcphershon@duanemorris.com
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`Patrick C. Muldoon
`Registration No. 47,343
`505 9th Street, NW, Suite 1000
`Washington, D.C. 20004
`Telephone: (202) 776-7840
`Facsimile: (202) 776-7801
`PCMuldoon@duanemorris.com
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`Joseph A. Powers
`Registration 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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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that for the above-captioned “Reply to Patent
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`Owner’s Opposition to Petitioners’ Motion to Exclude Evidence” service was
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`effective via the PTAB E2E filing and by Electronic Mail upon the following parties
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`on February 20, 2019:
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`James Hannah: jhannah@kramerlevin.com
`Jeffrey H. Price: jprice@kramerlevin.com
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` /Patrick D. McPherson/
`Patrick D. McPherson
`Registration No. 46,255
`505 9th Street, NW, Suite 1000
`Washington, D.C. 20004
`Telephone: (202) 776-7000
`Facsimile: (202) 776-7801
`PDMcphershon@duanemorris.com
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