`
`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 OBJECTIONS TO EVIDENCE
`IN PETITIONER’S REPLY UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`Patent Owner Finjan, Inc. (“Patent Owner”) objects under the Federal Rules
`
`of Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the following
`
`documents submitted by Cisco Systems, Inc. (“Petitioner) in its Reply to Patent
`
`Owner’s Response (“Reply”). Paper No. 16.
`
`I.
`
`PETITIONER’S EVIDENCE
`
`A. Exhibit 1027 – Transcript of Deposition of Dr. Paul Clark (“Clark
`Transcript”)
`
`Patent Owner objects to the admissibility of the Clark Transcript for at least
`
`the following reasons:
`
`Patent Owner objects because the cited portions of the Clark Transcript are
`
`not relevant under FRE 401 and are inadmissible under FRE 402. Moreover,
`
`Petitioner’s use of the Clark Transcript is confusing, of minimal probative value,
`
`outweighed by prejudice, and/or a waste of time and is therefore inadmissible
`
`under FRE 403. In addition, the citations are objectionable because the transcript
`
`citations in the Reply are incomplete and do not provide all of the necessary
`
`context.
`
`Patent Owner objects to the portions of the Clark Transcript that Petitioner
`
`does not cite to or rely on in its Reply. Such evidence is not relevant under FRE
`
`401 and is inadmissible under FRE 402. Any attempt by Petitioner to rely on these
`
`portions would be highly prejudicial to Patent Owner under FRE 403.
`
`1
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`Also, Dr. Clark is unqualified as an expert to provide technical opinions as a
`
`person of skill in the art. Therefore, Dr. Clark’s opinions are inadmissible under
`
`FRE 702. The Clark Transcript is also inadmissible under FRE 702 because Dr.
`
`Clark’s opinions are conclusory, do not disclose underlying facts or data in support
`
`of his opinions, and are unreliable.
`
`B.
`
`Exhibit 1028 – Transcript of Deposition of Dr. Nenad Medvidovic,
`(“Medvidovic Transcript”)
`
`Patent Owner objects to the admissibility of the Medvidovic Transcript for at
`
`least the following reasons:
`
`Patent Owner objects because the cited portions of the Medvidovic
`
`Transcript are not relevant under FRE 401 and are inadmissible under FRE 402.
`
`Moreover, Petitioner’s use of the Medvidovic Transcript is confusing, of minimal
`
`probative value, outweighed by prejudice, and/or a waste of time and is therefore
`
`inadmissible under FRE 403. In addition, the citations are objectionable because
`
`the transcript citations in the Reply are incomplete and do not provide all of the
`
`necessary context.
`
`Patent Owner objects to the portions of the Medvidovic Transcript that
`
`Petitioner does not cite to or rely on in its Reply. Such evidence is not relevant
`
`under FRE 401 and is inadmissible under FRE 402. Any attempt by Petitioner to
`
`rely on these portions would be highly prejudicial to Patent Owner under FRE 403.
`
`2
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`C. Exhibit 1029 – Web Security & Commerce, O’Reilly &
`Associates, Inc., Garfinkel and Spafford, June 1997 (“Spafford
`Reference”)
`
`Patent Owner objects to the admissibility of the Spafford Reference for at
`
`least the following reasons:
`
`Patent Owner objects to the Spafford Reference as untimely because
`
`Petitioner should have introduced it in its Petition. See 37 C.F.R. § 42.104(b); 37
`
`C.F.R. § 42.23(b); 37 C.F.R. § 42.123.
`
`Patent Owner objects because the Spafford Reference is inadmissible under
`
`FRE 401-403 because Petitioner does not rely on this exhibit in its Reply and
`
`because the Board did not institute IPR based on the reference. As such, the
`
`Spafford Reference is inadmissible under FRE 401–403 because it is not relevant
`
`to any part of this proceeding and to allow Petitioner to rely on this irrelevant
`
`reference would be highly prejudicial, confusing, and/or a waste of time.
`
`The Spafford Reference introduces portions of writings, the whole of which
`
`were not submitted as evidence. As such, the Spafford Reference is not proper
`
`evidence under FRE 106. Petitioner has also failed to establish that the Spafford
`
`Reference is what Petitioner claims it is, and has failed to authenticate Exhibit
`
`1029 under FRE 901.
`
`To the extent that Petitioner attempts to rely on any date that appears within
`
`the Spafford Reference to establish public accessibility of Exhibit 1029 as a printed
`
`3
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`publication, the dates are hearsay under FRE 801 and does not fall within a hearsay
`
`exception under FRE 802 and FRE 803. Further, the dates have not been
`
`authenticated and are inadmissible under FRE 901. Accordingly, for the foregoing
`
`reasons, the Spafford Reference is not relevant under FRE 401 and is inadmissible
`
`under FRE 402.
`
`D. Deposition Objections
`Patent Owner reserves all objections that it made during depositions in this
`
`proceeding.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`Dated: December 17, 2018
`
`(Case No. IPR2018-00391)
`
`
`
`Patent Owner’s Objections to Evidence
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`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: 650.752.1800
`
`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: 212.715.8000
`
`Attorneys for Patent Owner
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Petitioner as detailed below.
`
`Date of service
`
`
`
`December 17, 2018
`
`Manner of service
`
`Documents served
`
`Persons Served
`
`
`
`
`
`Electronic Mail
`(PDMcPherson@duanemorris.com;
`PCMuldoon@duanemorris.com;
`japowers@duanemorris.com)
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE IN
`PETITIONER’S REPLY
`
`Patrick D. McPherson
`Patrick Muldoon
`Joseph A. Powers
`DUANE MORRIS LLP
`
`
`
` /James Hannah/
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
`
`6
`
`
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