`
`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
`
`
`__________________________________________________________
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64
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`
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`
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`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
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`Patent Owner, Finjan, Inc. (“Finjan”) objects under the Federal Rules of
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`Evidence and 37 C.F.R. § 42.64 to the admissibility of the following documents
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`submitted by Cisco Systems, Inc. in Petitioner’s Petition. Paper No. 1.
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`I.
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`Exhibit 1003: Declaration of Petitioner’s Expert Dr. Paul Clark
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`Finjan objects to the admissibility of the Declaration of Dr. Paul Clark in
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`Support of Petitioner’s Petition (“Clark Declaration”) for at least the following
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`reasons:
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`1. Finjan objects to the Clark Declaration because Dr. Clark’s opinions are
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`conclusory, do not disclose underlying facts or data in support of his
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`opinions, and are unreliable. For example, Dr. Clark merely repeats
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`verbatim language from a footnote in the Petition, without disclosing any
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`analysis. Petition at 57; Ex. 1003, ¶ 118. There, Dr. Clark does not
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`explain how “tagging” the data packets that Petitioner maps to the
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`claimed “executable code” can occur without modifying that code.
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`Therefore, Dr. Clark’s opinions are not relevant under FRE 401 and are
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`inadmissible under FRE 402. Moreover, Dr. Clark’s opinions are
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`confusing, of minimal probative value, outweighed by prejudice, and/or a
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`waste of time and therefore inadmissible under FRE 403.
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`2. Further, Dr. Clark is unqualified as an expert to provide technical
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`opinions of person of skill in the art, and did not provide his curriculum
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`1
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`
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`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`vitae. See Ex. 1003, ¶¶10–18. Therefore, Dr. Clark’s opinions are
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`inadmissible under FRE 702.
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`3. Finjan also objects to the Clark Petition Declaration because it does not
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`introduce evidence of Dr. Clark’s personal knowledge of the subject
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`matter of the testimony contained therein, rendering such testimony
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`inadmissible under FRE 602.
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`4. To the extent that Dr. Clark relied on inadmissible evidence discussed
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`herein as part of his analysis, those portions of Dr. Clark’s declaration are
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`also inadmissible under at least FRE 401, FRE 402, and/or FRE 403.
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`II.
`
`Patents, Patent Applications, and Patent File Histories
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`Finjan objects to the admissibility of the following exhibits for at least the
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`following reasons:
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`
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`1004 PCT Published Application WO 98/31124 (“Hanson”)
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`1005 U.S. Patent No. 6,577,920 (“Hypponen”)
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`1007 PCT Published Application WO 98/21683 (“Touboul 98”)
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`1008 PCT Published Application WO 99/35583 (“Touboul 99”)
`
`1011 UK Patent Application GB 2 322 035 A (“Nash”)
`
`1012 U.S. Patent No. 6,772,346 (“Chess”)
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`1014 Select portions of the prosecution history of U.S. Reexamination
`
`application No. 90/013,652, (“the ’652 reexam”)
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`2
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`
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`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`1015 U.S. Patent application ser. No. 08/964,388 (“the ’388
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`application”)
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`1016 U.S. Patent application ser. No. 09/861,229 (“the ’229
`
`application”)
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`1017 U.S. Provisional application No. 60/205,591 (“the ’591
`
`provisional”)
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`1018 Select portions of the prosecution history of U.S. Reexamination
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`application No. 90/013,016 (“the ’016 reexam”)
`
`1019 U.S. Provisional application No. 60/030,639 (“the ’639
`
`Provisional”)
`
`1020 U.S. Patent No. 6,092,194 (“the ’194 Patent”)
`
`1022 U.S. Patent Application ser. No. 09/551,302 (“the ’302
`
`application”)
`
`1023 U.S. Patent Application ser. No. 08/790,097 (“the ’097
`
`application”)
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`
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`
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`1. Exhibits 1004, 1005, 1007, 1008, 1011, 1012, 1014, 1015, 1016, 1017,
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`1018, 1019, 1020, 1022, and 1023 are inadmissible under FRE 401 – 403
`
`because they are not relevant to any analysis that Petitioner provides that
`
`3
`
`
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`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
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`supports its position that the ‘633 Patent is invalid. As such, these
`
`exhibits are irrelevant.
`
`2. Further, for Exhibits 1008, 1011, 1012, 1014, 1015, 1016, 1017, 1018,
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`1019, 1020, 1022, and 1023, the Board did not institute IPR based on
`
`these exhibits. As such, these exhibits are inadmissible under FRE 401–
`
`403 because they are not relevant.
`
`III. Exhibits 1006, 1009, 1010
`
`Finjan objects to the following exhibits for at least the following reasons:
`
`
`
`
`
`1006 Rx PC The Anti-Virus Handbook, Endrijonas.
`
`Windcrest/McGraw-Hill in 1993. (“Rx PC”)
`
`1009 Hardening COTS Software with Generic Software Wrappers.,
`
`1999 IEEE Symposium on Security and Privacy Proceedings, T.
`
`Fraser et al., May 1999 (“Fraser”)
`
`
`
`1010 User’s Guide: WebScanX for Windows 3.1x, Windows 95, and
`
`Windows NT, McAfee Associates, Inc., Aug. 1997 (“WebScanX”)
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`1. Exhibits 1006, 1009, 1010 introduce portions of writings, the whole of
`
`which were not submitted as evidence. As such, these exhibits are not
`
`proper evidence under FRE 106.
`
`2. Petitioner has failed to authenticate Exhibits 1006, 1009, 1010 under
`
`FRE 901 and FRE 602. Specifically, Petitioner has failed to establish
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`4
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`
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`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
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`that Exhibits 1006, 1009, 1010 are what Petitioner claims it is, and has
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`failed to authenticate Exhibits 1006, 1009, 1010.
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`3. Additionally, Finjan objects to Exhibits 1006, 1009, and 1010 as
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`improper prior art because they are not an enabling disclosure.
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`Specifically, Cisco does not rely on these Exhibits as the bases for its
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`invalidity challenge. Rather, Cisco relies on Hyponennen, Hanson, and
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`Touboul 98. Nonetheless, Cisco has not demonstrated that these Exhibits
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`are enabled.
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`4. To the extent that Petitioner attempts to rely on any date that appears on
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`the Exhibits 1006, 1009, 1010 to establish public accessibility of Exhibits
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`1006, 1009, 1010 as a printed publication, the dates are hearsay under
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`FRE 801 and does not fall within a hearsay exception under FRE 802
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`and FRE 803.
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`5. Further, the dates have not been authenticated and are inadmissible under
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`FRE 901.
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`6. Accordingly, for the foregoing reasons, Exhibits 1006, 1009, 1010 are
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`not relevant under FRE 401 and is inadmissible under FRE 402.
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`7. Moreover, Exhibits 1006, 1009, 1010 are confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and
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`therefore inadmissible under FRE 403.
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`5
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`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`8. Further, for Exhibits 1006, 1009, 1010, the Board did not institute IPR
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`based on these exhibits. As such, these exhibits are inadmissible under
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`FRE 401–403.
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`IV. Exhibit 1013 Related Patents
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`Finjan objects to Exhibit 1013 for at least the following reasons:
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`1. Exhibit 1013, which was created by counsel, is not evidence. Further, is
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`not relevant under FRE 401 and is inadmissible under FRE 402 because
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`Exhibit 13 purports to be “Related Patents,” but does not fully disclose
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`all of the patents related to the ‘633 Patent. Further, the Board did not
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`institute IPR based on Exhibit 1013. As such, Exhibit 1013 is of minimal
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`probative value, outweighed by prejudice, and/or a waste of time and
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`therefore inadmissible under FRE 403.
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`V. Exhibit 1021: Declaration of Justus L. Getty (“Getty Declaration”)
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`Finjan objects to the admissibility of Exhibit 1021 for at least the
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`following reasons:
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`1. Finjan incorporates its objections stated in § III.
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`2. The Getty Declaration does not properly authenticate Exhibits 1006,
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`1009, 1010 under FRE 901 or FRE 602.
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`6
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`
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`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
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`3. The Getty Declaration is not relevant under FRE 401–403 because it
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`purports to authenticate exhibits for which the Board did not institute
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`review.
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`Respectfully submitted,
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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
`
`Attorneys for Patent Owner
`
`Dated: June 19, 2018
`
`
`(Case No. IPR2018-00391)
`
`
`
`7
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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
`
`June 19, 2018
`
`Manner of service
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`Electronic Mail
`(PDMcPherson@duanemorris.com;
`PCMuldoon@duanemorris.com;
`japowers@duanemorris.com)
`
`Documents served
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`
`Persons Served
`
`Patrick D. McPherson
`Patrick Muldoon
`Joseph A. Powers
`DUANE MORRIS LLP
`
`/James Hannah/
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
`
`8
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`
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