Paper No. 33
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-00866
`U.S. Patent No. 8,458,341
`
`––––––––––––––––––
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-00866
`U.S. Patent No. 8,458,341
`
`––––––––––––––––––
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`IPR2015-00866
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`
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`Petitioner’s Opp. to Mot. to Exclude
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`Table of Contents
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`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Argument ......................................................................................................... 1
`
`A.
`
`B.
`
`Exhibits 1060 and 1063-1065 Are Admissible ..................................... 1
`
`Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053,
`1054, 1069, and 1071 Are Admissible .................................................. 7
`
`C.
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`Exhibit 1005 Is Admissible in Its Entirety ............................................ 9
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`III. Conclusion ..................................................................................................... 10
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`
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`
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`i
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Smartflash LLC,
`CBM2014-00180, Paper 50 (Sep. 25, 2015) .................................................... 8, 9
`
`Conoco Inc. v. Dep’t of Energy,
`99 F.3d 387 (Fed. Cir. 1996), as amended on reh’g in part (Jan. 2,
`1997) ..................................................................................................................... 7
`
`Doe v. United States,
`976 F.2d 1071 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993) ....................... 1
`
`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (May 18, 2015) ........................................................... 6
`
`Google Inc. v. Intellectual Ventures II LLC,
`IPR2014-01034, Paper 41 (Dec. 7, 2015)............................................................. 9
`
`IBM Corp. v. Intellectual Ventures II LLC,
`IPR2015-00089, Paper 44 (Apr. 25, 2016) ........................................................... 7
`
`PGMedia, Inc. v. Network Solutions, Inc.,
`51 F. Supp. 2d 389 (S.D.N.Y. 1999) .................................................................... 6
`
`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ............................................................................. 5
`
`Samsung Electronics America, Inc. v. Smarthflash LLC,
`CBM2014-00193, Paper 45 (Mar. 30, 2016) ...................................................... 10
`
`Ultratec, Inc. v. Sorenson Commc'ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ........................ 5
`
`United States v. North,
`910 F.2d 843 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991) ........................ 2
`
`Other Authorities
`
`37 C.F.R. § 42.53(f)(5) .............................................................................................. 9
`
`ii
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`37 C.F.R. § 42.65 ....................................................................................................... 8
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`Fed. R. Evid. 801(c)(2) .............................................................................................. 2
`
`Fed. R. Evid. 807 ..............................................................................................passim
`
`Fed. R. Evid. 807(a) ................................................................................................... 1
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`Fed. R. Evid. 807(b) ................................................................................................... 1
`
`FRE 401 and 402 ........................................................................................................ 8
`
`
`
`iii
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`IPR2015-00866
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`I.
`
`Introduction
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`
`
`Petitioner’s Opp. to Mot. to Exclude
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`The evidence of record establishes that Exhibits 1002-1006, 1010-1041,
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`1043-1048, 1050, 1051, 1053, 1054, 1060, 1063-1065, 1069 and 1071 are
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`admissible. Patent Owner has failed to show otherwise, and thus, its motion must
`
`be denied. See Paper 30 (“Mot.”).
`
`II. Argument
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`A. Exhibits 1060 and 1063-1065 Are Admissible
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`Patent Owner moves to exclude Exhibits 1060 an 1063-1065 as inadmissible
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`hearsay. Mot. at 2-5. That motion should be denied, as these exhibits qualify for
`
`the residual exception to hearsay. Fed. R. Evid. 807.
`
`Under Federal Rule of Evidence 807, a “statement is not excluded by the
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`rule against hearsay” if: “(1) the statement has equivalent circumstantial guarantees
`
`of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more
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`probative on the point for which it is offered than any other evidence that the
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`proponent can obtain through reasonable efforts; and (4) admitting it will best
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`serve the purposes of these rules and the interests of justice.” Fed. R. Evid. 807(a).
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`The proponent of the testimony must also give (5) “an adverse party reasonable
`
`notice of the intent to offer the statement and its particulars.” Fed. R. Evid. 807(b).
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`Courts are accorded wide discretion in applying this exception. Doe v. United
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`States, 976 F.2d 1071, 1076–77 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993);
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`1
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`United States v. North, 910 F.2d 843, 909 (D.C. Cir. 1990) cert. denied 500 U.S.
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`941 (1991).
`
`Exhibits 1060 and 1063 include the testimony of Ms. Sandy Ginoza, Exhibit
`
`1064 is an InfoWorld magazine article from 1999, and Exhibit 1065 is a
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`NetworkWorld magazine article from 1999. Each of these exhibits is relied upon
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`to show that each of RFC 2401 and RFC 2543 were publicly available for
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`distribution via the Internet prior to February 2000. Reply at 20-22; Paper 14 at 4-
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`7.2 As explained below, to the extent these exhibits contain statements that are
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`hearsay, they satisfy the residual exception to hearsay, and are admissible.
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`First, Exhibits 1060 and 1063-1065 have equivalent circumstantial
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`guarantees of trustworthiness. See Fed. R. Evid. 807(a)(1). Exhibits 1060 and
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`1063 contain the prior sworn testimony of Ms. Ginoza and IETF and reflect Patent
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`Owner’s cross-examination of Ms. Ginoza on the substance of her testimony.
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`Exhibit 1060 is a declaration from Sandy Ginoza, acting as a designated
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`representative of the IETF, created in response to a subpoena served as part of an
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`
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`2 Exhibits 1064-1065 are also relied upon to show that an interested ordinary
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`artisan, exercising reasonable diligence, would have known how to locate RFC
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`2401 and RFC 2543. See Reply at 20; Paper 14 at 7. They are not hearsay when
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`offered for that purpose. See Fed. R. Evid. 801(c)(2).
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`2
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`investigation initiated by Patent Owner before the International Trade Commission
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`(337-TA-858). Ex. 1060 at ¶¶ 1-5; Ex. 1063 at 6:23-7:4, 10:5-14. In her
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`declaration, Ms. Ginoza testified that RFC 2401 and RFC 2543 were published on
`
`the RFC Editor’s website and were publicly available before February 2000. Ex.
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`1060 at ¶¶ 105-107, 168-170. Exhibit 1063 is the transcript of Ms. Ginoza’s
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`February 8, 2013 deposition that was taken as part of the ITC action, where she
`
`testified RFC 2401 and RFC 2543 were publicly available prior to February 2000.
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`Ex. 1063 at 39:14-24, 45:5-46:17; see id. at 10:5-11:22 (confirming her knowledge
`
`of IETF publishing practices as they relate to RFCs). Patent Owner cross-
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`examined Ms. Ginoza about her testimony and declaration, but developed no
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`contrary testimony. See id. at 50:7-69:1.
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`This testimony is corroborated by and corroborates the disclosure in
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`Exhibits 1064 and 1065, which are excerpts from industry publications that state it
`
`was known that RFCs, and RFC 2401 specifically, were publicly available through
`
`the Internet, such as through the IETF’s website. See, e.g., Ex. 1064 at 9
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`(discussing RFCs 2401 to 2408 and stating “All of these documents are available
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`on the IETF website: www.ietf.org/rfc.html”); Ex. 1065 at 3 (discussing IP security
`
`protocols and stating “See the IETF documents RFC 2401 ‘Security Architecture
`
`for the Internet Protocol’ at www.ietf.org/rfc/rfc2401.txt”).
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`Substantial circumstantial guarantees of trustworthiness are also provided by
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`3
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`the evidence submitted with Petitioner’s original filings, such as the testimony of
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`Dr. Tamassia and RFC 2026. Dr. Tamassia explained that RFCs are the official
`
`publication channel for Internet standards, with the publication process described
`
`in RFC 2026 (Ex. 1036), Ex. 1005 at ¶¶186-93, which explains that anyone can
`
`obtain RFCs from a number of Internet hosts, Ex. 1036 at 5-6, and that each RFC
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`“is made available for review via world-wide on-line directories,” id. at 4; see Ex.
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`1005 at ¶187. Dr. Tamassia testified from his personal knowledge that RFCs list
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`their publication date in the top corner of the first page (Ex. 1005 at ¶190), which
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`in the case of RFC 2401 and RFC 2543 perfectly matches Ms. Ginoza’s testimony.
`
`Compare Ex. 1063 at 40:20-24 (RFC 2401), 46:11-17 (RFC 2543) with Ex. 1008
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`at 1 and Ex. 1013 at 1. Further circumstantial guarantees of trustworthiness come
`
`from Dr. Monrose’s refusal to testify on this topic. See Ex. 1066 at 112:25-114:6,
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`118:10-121:11; see generally Ex. 2016.
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`Second, Exhibits 1060 and 1063-1065 are offered as evidence of a material
`
`fact (Fed. R. Evid. 807(a)(2)): the public availability of RFC 2401 prior to
`
`February 2000. Paper 14 at 4-7.
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`Third, Exhibits 1060 and 1063-1065 are more probative on the point for
`
`which it is offered than any other evidence that the proponent can obtain through
`
`reasonable efforts. See Fed. R. Evid. 807(a)(3). The testimony is probative
`
`because Ms. Ginoza testified “on behalf of the Internet Engineering Task Force” as
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`4
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`a designated corporate representative, (Ex. 1063 at 10:5-22; Ex. 1060 at 1 (entitled
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`“Declaration of the RFC Publisher for the [IETF]”)), and, as such, was testifying to
`
`“the knowledge of the corporation,” Poole v. Textron, Inc., 192 F.R.D. 494, 504
`
`(D. Md. 2000). And, corporate witnesses like Ms. Ginoza commonly testify about
`
`publication date of a prior art document. See, e.g., Ultratec, Inc. v. Sorenson
`
`Commc'ns, Inc., No. 13-CV-346, 2014 WL 4829173, at *6 (W.D. Wis. Sept. 29,
`
`2014). Ms. Ginoza’s testimony was developed during concurrent litigation
`
`between the parties, where Patent Owner had an incentive to develop any contrary
`
`testimony from Ms. Ginoza on the publication issue. The IETF has also already
`
`authenticated and corroborated the publication of RFC 2401 and RFC 2543 in the
`
`context of the parties’ disputes, and it is not reasonable to force the IETF, who is
`
`not a party to these disputes, to do so again.
`
`Fourth, it would be in the interests of justice to admit Exhibits 1060 and
`
`1063-1065. See Fed. R. Evid. 807(a)(4). RFC documents, such as those at issue
`
`here, are perhaps one of the most well-known sources of technical information in
`
`the art at issue in this proceeding. See, e.g., Control No. 95/001,7893, Action
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`Closing Prosecution (Sept. 9, 2012) (“Regarding the RFC(s), these publications are
`
`
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`3 Control No. 95/001,789 involves a family member of the patent at issue here.
`
`5
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`among the most authoritative publications for Internet systems and protocols.”).4
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`Excluding Ms Ginoza’s testimony about these documents—particularly where
`
`Patent Owner has already cross-examined her on that testimony—would not
`
`comport with “an administrative proceeding designed and intended to afford
`
`expedited and efficient relief.” See Ericsson Inc. v. Intellectual Ventures I LLC,
`
`IPR2014-00527, Paper 41 at 56 (May 18, 2015). Likewise, Exhibits 1064 and
`
`1065 are journal articles from publications that were well-known to those of skill,
`
`and their exclusion would remove a reliable source of evidence from the record.
`
`See Resp. at 58-60 (making no argument as to Exs. 1064-1065).
`
`Lastly, Petitioner gave Patent Owner “reasonable notice of the intent to offer
`
`the statement and its particulars” (Fed. R. Evid. 807(b)), as evidenced by the
`
`discussion and reliance on the exhibits in the Motion to Submit Supplemental
`
`Information. See Paper 17 at 9-11. Therefore, Exhibits 1060 and 1063-1065 are
`
`admissible under the residual exception to the rule against hearsay.
`
`Patent Owner offers several meritless rebuttals to this analysis. First, Patent
`
`
`
`4 “[M]uch of the development and technical management of the Internet has been
`
`by the consensus of Internet users. This is evidenced… by IETF and the more than
`
`2000 RFC’s which have been written and circulated.” PGMedia, Inc. v. Network
`
`Solutions, Inc., 51 F. Supp. 2d 389, 391 (S.D.N.Y. 1999) (citation omitted).
`
`6
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`Owner blankly states there is “no evidence corroborating” Ms. Ginoza’s statements
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`and those made in Exhibits 1064 and 1065, Mot. at 3-4, which entirely ignores they
`
`are corroborated by and corroborate Dr. Tamassia’s RFC testimony and RFC
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`2026. See IBM Corp. v. Intellectual Ventures II LLC, IPR2015-00089, Paper 44 at
`
`55-56 (Apr. 25, 2016) (“We are persuaded that Exhibits 1008, 1009, and 1022 are
`
`consistent as to the close proximity of the dates shown, corroborate each other, and
`
`are circumstantial evidence of trustworthiness.”). Second, Patent Owner suggests
`
`that Petitioner “could have contacted the [RFC] authors” to obtain more probative
`
`testimony, Mot. at 4-5, but filed a paper on the same day in another proceeding
`
`arguing that testimony “prepared long after the events [it] purport[s] to
`
`memorialize” “cuts against the [testimony’s] trustworthiness,” IPR2015-00871,
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`Paper 30 at 4. Lastly, Patent Owner’s reliance on 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) is
`
`misplaced: Conoco dealt with purchase schedules, not signed affidavits from
`
`individuals already subject to extensive cross-examination by Patent Owner. See
`
`Mot. at 3.
`
`B.
`
`Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053,
`1054, 1069, and 1071 Are Admissible
`
`Patent Owner moves to exclude Exhibits 1002-1004, 1006, 1010-1041,
`
`1043-1048, 1050, 1051, 1053, 1054, 1069, and 1071 as lacking relevance because
`
`they are not cited in the Petition or Petitioner’s Reply. Mot. at 5-6. This is an
`7
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`erroneous basis for lacking relevance, as evidence relied upon in forming an
`
`expert’s opinion is relevant under FRE 401 and 402. See Apple Inc. v. Smartflash
`
`LLC, CBM2014-00180, Paper 50 at 19-20 (Sep. 25, 2015) (“Because [Petitioner’s
`
`expert] attests that he reviewed these exhibits in reaching the opinions he
`
`expressed in this case, Patent Owner has not shown that they are irrelevant under
`
`FRE 401 and 402.”). The admissibility of this type of evidence is particularly
`
`important because “[e]xpert testimony that does not disclose the underlying facts
`
`or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R.
`
`§ 42.65.
`
`Dr. Tamassia, in forming his opinions, considered and relied on the
`
`materials listed in Appendix A to his report, which lists all but one of the
`
`purportedly irrelevant exhibits. Ex. 1005 at ¶9. Indeed, most of these relied upon
`
`exhibits are discussed explicitly in his report. See, e.g., Ex. 1005 at ¶61 (Ex.
`
`1002), ¶55 (Ex. 1003), ¶62 (Ex. 1004), ¶6 (Ex. 1006), ¶182 (Ex. 1010), ¶211 (Ex.
`
`1011), ¶442 (Ex. 1012), ¶456 (Ex. 1013), ¶200 (Ex. 1018), ¶224 (Ex. 1019), ¶407
`
`(Ex. 1020), ¶407 (Ex. 1021), ¶408 (Ex. 1024), ¶415 (Ex. 1025), ¶200 (Ex. 1030),
`
`¶254 (Ex. 1031), ¶163 (Ex. 1032), ¶163 (Ex. 1033), ¶163 (Ex. 1034), ¶163 (Ex.
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`1035), ¶187 (Ex. 1036), ¶198 (Ex. 1037), ¶328 (Ex. 1038), ¶330 (Ex. 1039), ¶351
`
`(Ex. 1040), ¶61 (Ex. 1044), ¶175 (Ex. 1045), ¶177 (Ex. 1046), ¶177 (Ex. 1047),
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`¶335 (Ex. 1048), ¶55 (Ex. 1050), ¶63 (Ex. 1051), ¶202 (Ex. 1053). Other exhibits
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`8
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`were specifically discussed in depositions of Dr. Tamassia filed by Patent Owner
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`in this proceeding. See, e.g., Ex. 2019 at 62:20-63:21 (discussing Ex. 1043). The
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`remaining exhibits that were not discussed explicitly in his report were
`
`nevertheless relied on by Dr. Tamassia in informing his understanding of the issues
`
`in this proceeding, Ex. 1005 at ¶9, and are thus relevant, see Smartflash,
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`CBM2014-00180, Paper 50 at 19-20.
`
`The only purportedly irrelevant exhibits not relied upon in Dr. Tamassia’s
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`declaration are his signature of his deposition transcript, Ex. 1071, which was
`
`submitted pursuant to 37 C.F.R. § 42.53(f)(5), and Exhibit 1069. The continued
`
`presence of this latter exhibit causes no conceivable prejudice to Patent Owner or
`
`the Board. Patent Owner’s challenge should therefore be dismissed.
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`C. Exhibit 1005 Is Admissible in Its Entirety
`
`Patent Owner moves to exclude “vast portions” of Dr. Tamassia’s
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`declaration (Exhibit 1005) because they supposedly lack relevance. Mot. at 6.
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`Patent Owner's supposed justification is that certain testimony concerns grounds
`
`addressed in related proceedings. Id. Excluding such testimony, to the extent it is
`
`not relied upon in this proceeding, serves no purpose. The presence of other
`
`grounds in Dr. Tamassia’s declaration is analogous to testimony and evidence
`
`related to non-instituted grounds, and the Board regularly rejects attempts to
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`exclude such evidence. See, e.g., Google Inc. v. Intellectual Ventures II LLC,
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`9
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`IPR2014-01034, Paper 41 at 9 (Dec. 7, 2015) (evidence); Samsung Electronics
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`America, Inc. v. Smarthflash LLC, CBM2014-00193, Paper 45 at 24 (Mar. 30,
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`2016) (testimony).
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`It also is not confusing, as Patent Owner contends—the Board is more than
`
`capable of considering only the portions of Dr. Tamassia’s declaration relevant to
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`this proceeding. Patent Owner’s request to exclude paragraphs of Dr. Tamassia’s
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`declaration would create unnecessary work and cause undue confusion, and should
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`be denied.
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`III. Conclusion
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`For the foregoing reasons, the Board should deny Patent Owner’s Motion.
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`Dated: June 6, 2016
`
`Respectfully Submitted,
`
`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner Apple
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`10
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`IPR2015-00866
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`Petitioner’s Opp. to Mot. to Exclude
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 6th day of June,
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`2016, I caused to be served a true and correct copy of the foregoing by e-mail on
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`the following counsel:
`
`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
`
`Jason E. Stach
`E-mail: Jason.stach@finnegan.com
`
`
`
`
`Dated: June 6, 2016
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`Respectfully Submitted,
`
`
`
`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner Apple
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