throbber
Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`Paper No. ____
`Filed: May 23, 2016
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00866
`Patent No. 8,458,341
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`
`Table of Contents
`
`Precise Relief Requested ................................................................................. 1
`
`Legal Standard ................................................................................................. 1
`
`
`I.
`
`II.
`
`III. Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053,
`1054, 1060, 1063-1065, 1069 and 1071, and Portions of Exhibit 1005
`Should be Excluded from the Record .............................................................. 1
`
`A.
`
`B.
`
`Exhibits 1060 and 1063-1065 Constitute Inadmissible Hearsay .......... 2
`
`Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051,
`1053, 1054, 1069, and 1071 Lack Relevance ....................................... 5
`
`C.
`
`Portions of Exhibit 1005 Lack Relevance ............................................. 6
`
`IV. Conclusion ....................................................................................................... 7
`
`
`
`
`
`i
`
`

`
`TABLE OF AUTHORITIES
`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`
` Page(s)
`
`Cases
`Conoco Inc. v. Dep’t of Energy,
`
`
`
`99 F.3d 387 (Fed. Cir. 1996) ............................................................................ 3, 5
`
`Actifio, Inc., v. Delphix Corp.,
`
`
`
`IPR2015-00108, Paper No. 56 (Apr. 29, 2016) .................................................... 5
`
`Federal Regulations
`
`Federal Rule of Evidence 401 ................................................................................ 5-6
`
`Federal Rule of Evidence 402 ............................................................................ 1, 5-6
`
`Federal Rule of Evidence 403 ................................................................................ 5-6
`
`Federal Rule of Evidence 801 ................................................................................ 1, 2
`
`Federal Rule of Evidence 802 ................................................................................ 1, 2
`
`Federal Rule of Evidence 807 ................................................................................ 3-5
`
`37 C.F.R. 42.62(a) ...................................................................................................... 1
`
`Other
`
`Office Patent Trial Practice Guide,
` 77 Fed. Reg. 48758 .............................................................................................. 1
`
`
`
`
`
`ii
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`
`I.
`
`Precise Relief Requested
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner VirnetX Inc. (“Patent Owner”)
`
`moves to exclude certain exhibits submitted by Apple Inc. (“Petitioner”). This
`
`motion is timely filed in accordance with the Board’s Scheduling Order (Paper No.
`
`9). In particular, Patent Owner requests that Exhibits 1002-1004, 1006, 1010-
`
`1041, 1043-1048, 1050, 1051, 1053, 1054, 1060, 1063-1065, 1069 and 1071 and
`
`portions of Exhibit 1005 be excluded from the record.
`
`II. Legal Standard
`The Federal Rules of Evidence apply to inter partes review proceedings. 37
`
`C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under
`
`Federal Rule of Evidence 402, “irrelevant evidence is not admissible.” Fed. R.
`
`Evid. 402. Also, unless an exception applies, an out of court statement offered for
`
`the truth of the matter asserted is inadmissible. Fed. R. Evid. 801, 802.
`
`III. Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053, 1054,
`1060, 1063-1065, 1069 and 1071, and Portions of Exhibit 1005 Should be
`Excluded from the Record
`
`The Board should exclude Exhibits 1002-1004, 1006, 1010-1041, 1043-
`
`1048, 1050, 1051, 1053, 1054, 1060, 1063-1065, 1069 and 1071 because one or
`
`more of these exhibits includes evidence that is inadmissible hearsay or the
`
`evidence in these exhibits is irrelevant to the instant proceeding. The Board should
`
`also exclude portions of Exhibit 1005 because they are irrelevant to the instant
`
`proceeding. Patent Owner timely objected to these exhibits stating the precise
`
`1
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`grounds under which these exhibits are inadmissible. (Paper Nos. 12, 15, 28.)
`
`A. Exhibits 1060 and 1063-1065 Constitute Inadmissible Hearsay
`Exhibits 1060 and 1063-1065 should be excluded as inadmissible hearsay.
`
`See Fed. R. Evid. 801-802. Patent Owner previously objected to these exhibits on
`
`this ground. (Paper No. 12 at 1; Paper No. 15 at 1.) Petitioner has failed to rebut
`
`Patent Owner’s objections. As such, these exhibits should be excluded.
`
`In its Petition, Petitioner made the naked assertion that RFC 2401 “was
`
`published in November 1998.” (Paper No. 1 at 24.) After trial was instituted,
`
`Petitioner submitted additional evidence (Exs. 1060-1065) as supplemental
`
`information in support of its contention that RFC 2401 qualified as a printed
`
`publication as of November 1998. (Paper No. 14 at 4-8.) Exhibit 1060 is a
`
`declaration from Sandy Ginoza, a representative of the IETF, submitted in
`
`litigation before the International Trade Commission (337-TA-858) and Exhibit
`
`1063 is a “transcript of Ms. Ginoza’s February 8, 2013 deposition that was taken as
`
`part of the ITC action.” (Id. at 5-6.) Exhibit 1064 is allegedly “an article from
`
`InfoWorld magazine (dated August 16, 1999)” and Exhibit 1065 is allegedly “an
`
`article from NetworkWorld magazine (dated March 15, 1999).” (Id. at 6-7.) In its
`
`reply to the Patent Owner response, Petitioner further relied on the above exhibits
`
`to support its assertion regarding the publication date of RFC 2401. (Reply, Paper
`
`No. 26 at 19-22.) Each of Exhibits 1060 and 1063-1065 include out-of-court
`
`2
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`statements, i.e., statements that were not made for purposes of the present
`
`proceeding, and because Petitioner relies on the alleged truth of these out-of-court
`
`statements they constitute hearsay and are inadmissible unless an exception
`
`applies.
`
`Petitioner has yet to assert that these out-of-court statements are admissible
`
`under any hearsay exception. In a related proceeding, Petitioner has argued that
`
`these exhibits are admissible under the residual exception set forth in Rule 807. To
`
`fall under this exception, the statement must: 1) have equivalent circumstantial
`
`guarantees of trustworthiness; 2) be offered as evidence of a material fact; 3) be
`
`more probative on the point for which it is offered than any other evidence that the
`
`proponent can obtain through reasonable efforts; and 4) be in the interests of
`
`justice to admit. Fed. R. Evid. 807. The residual exception to the hearsay rule is to
`
`be reserved for “exceptional cases,” and is not “a broad license on trial judges to
`
`admit hearsay statements that do not fall within one of the other exceptions.”
`
`Conoco Inc. v. Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir. 1996), as amended on
`
`reh’g in part (Jan. 2, 1997) (internal quotations omitted). Here, Petitioner cannot
`
`show that all of the conditions for admissibility under FRE 807 are met.
`
`For example, Ms. Ginoza’s statements in Exhibits 1060 and 1063, and the
`
`statements in Exhibits 1064 and 1065 have no circumstantial guarantees of
`
`trustworthiness. There is no evidence corroborating Ms. Ginoza’s statements. She
`
`3
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`has no personal knowledge to support the assertions that RFC 2401 became
`
`publicly available in November 1998 and RFC 2543 became publicly available in
`
`March 1999. She was not involved with the RFC editor’s publication process until
`
`June of 1999. See Ex. 1063 at 14 (page 50, lines 17-25). Worse she not only
`
`failed to produce the RFC Editor records that formed the basis of her statements,
`
`but she also could not even explain what existed in those records that were the
`
`basis for her statements with respect to RFC 2401. (Ex. 1060 at ¶ 107; Ex. 1063 at
`
`11 (p. 40, ll. 2-5).) Therefore, her blanket assertion that “RFC 2401 has been
`
`publicly available through the RFC editor’s web site or through other means since
`
`its publication in November 1998” (Ex. 1060 at ¶ 107) has no “circumstantial
`
`guarantee[] of
`
`trustworthiness.”
`
` Further,
`
`there
`
`is no evidence having
`
`“circumstantial guarantees of trustworthiness” for the statements in Exhibits 1064
`
`and 1065 (Ex. 1064 at 9; Ex. 1065 at 3) relating to the availability of RFCs from
`
`the IETF website that Petitioner relies on for their truth. Reply, Paper No. 29 at
`
`23-24.
`
`In addition to lacking indicia of trustworthiness required by Rule 807, Ms.
`
`Ginoza’s statements and Exhibits 1064 and 1065 are not more probative than other
`
`evidence reasonably available to Petitioner, as required by FRE 807. As just one
`
`example, Petitioner could have contacted the authors of RFCs 2401 and 2543 to
`
`obtain declarations regarding their personal knowledge of the publication of RFCs
`
`4
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`2401 and 2453. Petitioner’s failure to submit such in court testimony not only
`
`shows that the evidence currently of record is not “more probative on the point for
`
`which it is offered than any other evidence that the proponent can obtain through
`
`reasonable efforts” but also shows that admitting this evidence is not “in the
`
`interests of justice,” as required by FRE 807. Indeed, this is simply not one of
`
`those “exceptional” cases where admitting hearsay evidence under the residual
`
`exception is warranted. Conoco Inc., 99 F.3d at 392.
`
`For at least the above reasons, the Board should exclude Exhibits 1060 and
`
`1063-1065 because they constitute inadmissible hearsay and no exception applies.
`
`B. Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053,
`1054, 1069, and 1071 Lack Relevance
`
`Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053, 1054,
`
`1069, and 1071 should be excluded because they lack relevance. Fed. R. Evid.
`
`401-403; see also Actifio, Inc., v. Delphix Corp., IPR2015-00108, Paper No. 56 at
`
`57 (Apr. 29, 2016) (excluding exhibits that were not relied upon). Patent Owner
`
`previously objected to these exhibits on this ground. (Paper No. 12 at 1, 2; Paper
`
`No. 15 at 1; Paper No. 28 at 1.)
`
`Each of these exhibits is inadmissible because Petitioner has not established
`
`that they are relevant. Fed. R. Evid. 401-403. For instance, Petitioner does not
`
`even cite to these exhibits in either the Petition or the Petitioner Reply. (Paper No.
`
`1; Paper No. 26.) Accordingly, each of these exhibits should be excluded from the
`
`5
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`
`record.
`
`C. Portions of Exhibit 1005 Lack Relevance
`Portions of Exhibit 1005 should be excluded because they lack relevance.
`
`Fed. R. Evid. 401-403. Patent Owner previously objected to these portions on this
`
`ground. (Paper No. 12 at 1.) Petitioner has failed to rebut Patent Owner’s
`
`objections. As such, these portions should be excluded.
`
`Specifically, when Petitioner filed Exhibit 1005, which is the declaration of
`
`its alleged expert, Dr. Roberto Tamassia, Petitioner made the strategic choice of
`
`filing a single declaration for not one but six proceedings (IPR2015-00866, 867,
`
`868, 869, 870, 871) that covered three patents (U.S. Patent Nos. 8,458,341,
`
`8,516,131, and 8,560,705). (See generally Ex. 1005.) Accordingly, vast portions
`
`of Exhibit 1005 are simply irrelevant to the instant proceeding. For instance, the
`
`current proceeding is based on Beser as the primary reference, but Dr. Tamassia’s
`
`declaration includes several pages focusing on Aventail, which is irrelevant to the
`
`current proceeding. (See, e.g., Ex. 1005 at ¶¶ 61-63, 180-311, 403-420, 447-451,
`
`459-460, 462-463.). Similarly, Dr. Tamassia’s declaration includes several pages
`
`focusing on Brand (see, e.g., Ex. 1005 at ¶¶ 442-455, 461, 463) and RFC 2543
`
`(see, e.g., Ex. 1005 at ¶¶ 196, 197, 456-460, 462), which are irrelevant to the
`
`current proceeding. Such irrelevant sections of Dr. Tamassia’s declaration should
`
`be excluded under FRE 401-403.
`
`6
`
`

`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`
`IV. Conclusion
`For the reasons set forth above, the Board should exclude Exhibits 1002-
`
`1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053, 1054, 1060, 1063-1065,
`
`1069 and 1071 and portions of Exhibit 1005 from the record.
`
`Dated: May 23, 2016
`
`Respectfully submitted,
`
`By:/Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
`7
`
`

`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-00866
`Patent No. 8,458,341
`
`
`I hereby certify that on this 23rd day of May 2016, a copy of the foregoing
`
`Patent Owner’s Motion to Exclude was served electronically, pursuant to
`
`agreement, upon the following:
`
`Counsel for Apple Inc.:
`
`
`Dated: May 23, 2016
`
`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX Inc.

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket