`By:
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`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
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`
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`Paper No. ___
`Filed: June 13, 2016
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`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
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`VIRNETX INC.
`Patent Owner
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`Case IPR2015-00866
`Patent No. 8,458,341
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`PATENT OWNER’S REPLY TO
`PETITIONER’S OPPOSITION OF MOTION TO EXCLUDE
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`Case No. IPR2015-00866
`Patent No. 8,458,341
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`Table of Contents
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`Exhibits 1060 and 1063-1065 Should Be Excluded ........................................ 1
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`Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053,
`1054, 1069, and 1071 and Portions of Exhibit 1005 Should be
`Excluded .......................................................................................................... 5
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`I.
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`II.
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`i
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`Case No. IPR2015-00866
`Patent No. 8,458,341
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Pozen Inc. v. Par Pharm., Inc.,
`696 F.3d 1511 (Fed. Cir. 2012) ........................................................................ 1, 2
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`Conoco Inc. v. DOE,
`99 F.3d 387 (Fed. Cir. 1996) ................................................................................ 5
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`Doe v. United States,
`976 F.2d 1071 (7th Cir. 1992) ......................................................................... 1, 5
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`Actifio, Inc., v. Delphix Corp.,
`IPR2015-00108, Paper No. 56 (Apr. 29, 2016) .................................................... 5
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`People v. Bowers,
`801 P.2d 511 (Colo.1990) ..................................................................................... 3
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`Delacruz v. State,
`734 So.2d 1116 (Fla. Dist. Ct. App. 1999) ........................................................... 3
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`In re Flannery,
`768 N.E.2d 34 (Ill. App. 2d Dist. 2002) ............................................................... 3
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`State v. Renly,
`827 P.2d 1345 (Or. App. 1992) ............................................................................ 3
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`A.P. v. Department of Public Welfare,
`696 A.2d 912 (Pa. Cmmw. 1997) ......................................................................... 3
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`Rules
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`Federal Rule of Evidence 807 ........................................................................... 1, 2, 4
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`On June 6, 2016, Petitioner Apple Inc. (“Apple”) filed an Opposition (Paper
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`Case No. IPR2015-00866
`Patent No. 8,458,341
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`No. 33) to Patent Owner’s Motion to Exclude (Paper No. 30). Apple, however,
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`provides insufficient reasons for admitting the exhibits at issue, i.e., Exhibits
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`1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053, 1054, 1060,
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`1063-1065, 1069 and 1071, and portions of Exhibit 1005. As such, Patent Owner’s
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`Motion to Exclude should be granted.
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`I.
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`Exhibits 1060 and 1063-1065 Should Be Excluded
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`Apple argues that Exhibits 1060 and 1063-1065 should be admitted under
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`the residual exception of Fed. R. Evid. 807. Paper No. 33 at 1. In support of this
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`position, Apple states that courts have “wide discretion” in applying the residual
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`exception to the hearsay rule. See Paper No. 33 at 1 (citing Doe v. United States,
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`976 F.2d 1071, 1076-77 (7th Cir. 1992)). This is incorrect. Apple’s reliance on
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`Doe, which involves out of court statements made by a child abuse victim against
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`his abuser, is misplaced. As provided by Doe, “Congress intended that the
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`residual exceptions be used sparingly; although trial judges are given considerable
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`discretion in evaluating hearsay offered thereunder, that discretion is ‘tempered by
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`the requirement that the exception be reserved for exceptional cases.’” 976 F.2d at
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`1074 (emphasis added). Indeed, the Federal Circuit recently excluded a sworn
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`declaration assumed to be trustworthy. Pozen Inc. v. Par Pharm., Inc., 696 F.3d
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`1151, 1161 n.6 (Fed. Cir. 2012) (even if the declaration at issue was trustworthy,
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`1
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`“this is not an exceptional case and thus does not warrant the residual hearsay
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`exception”).
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`Ignoring the mandate that the residual hearsay exception is to be “used
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`sparingly” for truly “exceptional cases,” Apple attempts to establish that statements
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`in these exhibits meet the five requirements of Rule 807. They do not. Apple first
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`argues that Ms. Ginoza’s statements in Exhibits 1060 and 1063 are corroborated by
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`and corroborate Exhibits 1064 and 1065. See Paper No. 33 at 2-4. That is
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`incorrect. Ms. Ginoza’s statements and the statements in Exhibits 1064 and 1065
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`have no circumstantial guarantees of trustworthiness. There is no evidence
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`corroborating Ms. Ginoza’s statements. She was not involved with the RFC
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`editor’s publication process until June of 1999. Ex. 1063 at 14 (page 50, lines 17-
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`25). She failed to produce the RFC Editor records that formed the basis of her
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`statements; she also could not explain what existed in those records that were the
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`basis of her statements with respect to RFC 2401. See Ex. 1060 at ¶ 107; Ex. 1063
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`at 11 (p. 40, ll. 2-5). Therefore, her blanket assertion that “RFC 2401 has been
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`publicly available through the RFC editor’s web site or through other means since
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`its publication in November 1998” (Ex. 1060 at ¶ 107) has no “circumstantial
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`guarantee[] of trustworthiness.” Further, there is no evidence having
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`“circumstantial guarantees of trustworthiness” for the statements in Exhibits 1064
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`2
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`and 1065 (Ex. 1064 at 9; Ex. 1065 at 3) relating to the availability of RFCs from
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`the IETF website that Apple relies on for their truth. 1 Paper No. 26 at 19, 20.
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`Apple relies on Exhibits 1064 and 1065 in an attempt to corroborate Ms.
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`Ginoza’s statements. But this circular analysis must be rejected. As courts have
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`repeatedly explained, “[s]uch reciprocal use of hearsay as corroborative evidence
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`would be but another form of evidentiary bootstrapping” and “the corroborative-
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`evidence requirement cannot be satisfied by using one or several . . . hearsay
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`statements to corroborate . . . another hearsay statement.” See, e.g., People v.
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`Bowers, 801 P.2d 511, 527 (Colo.1990); see also Delacruz v. State, 734 So.2d
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`1116 (Fla. Dist. Ct. App. 1999); In re Flannery, 768 N.E.2d 34 (Ill. App. 2d Dist.
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`2002); State v. Renly, 827 P.2d 1345 (Or. App. 1992); A.P. v. Department of
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`Public Welfare, 696 A.2d 912 (Pa. Cmmw. 1997). Apple’s reliance on IBM Corp.
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`v. Intellectual Ventures II LLC, IPR2015-00089, Paper No. 44 (Apr. 25, 2016), is
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`incorrect. In IBM, an Office Manager of the Internet Archive provided an affidavit
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`accompanied with objective evidence establishing the publication date of the non-
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`patent literature in dispute. The Board relied on this affidavit as evidence
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`1 Apple asserts that Exhibits 1064 and 1065 are being submitted for another
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`purpose as well and should be admitted. Paper No. 33 at 2 n.2. Patent Owner
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`disagrees as these exhibits are being submitted for their truth. Paper No. 26 at 20.
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`3
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`corroborating non-declarant hearsay statements regarding the publication date. In
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`stark contrast, Dr. Tamassia, which Apple analogizes to the Office Manager in
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`IBM, has not provided any objective evidence establishing the publication dates of
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`the RFCs in dispute.
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`Ms. Ginoza’s statements and Exhibits 1064 and 1065 are also not more
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`probative than other evidence reasonably available to Petitioner, as required by
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`FRE 807. As just one example, Petitioner could have contacted the authors of
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`RFC 2401 to obtain declarations regarding their personal knowledge of the
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`publication of RFC 2401. Petitioner’s failure to submit such in court testimony not
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`only shows that the evidence currently of record is not “more probative on the
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`point for which it is offered than any other evidence that the proponent can obtain
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`through reasonable efforts,” but also shows that admitting this evidence is not “in
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`the interests of justice,” as required by FRE 807. Apple does not deny that that it
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`could have contacted the authors of RFC 2401 to obtain more probative evidence
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`as to the publication date of RFC 2401. Paper No. 33 at 7. Rather, Apple suggests
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`that testimony from the RFC authors may not have been trustworthy given the long
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`period of time since the alleged publication. Paper No. 33 at 7. But the very same
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`criticism could be lodged against Dr. Tamassia’s testimony, which Apple suggests
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`provides corroboration. Apple cannot have it both ways.
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`Apple does not argue that the present facts present an exceptional case that
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`4
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`warrants admitting hearsay evidence under the residual exception. Rather, Apple
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`argues that Conoco Inc., v. Dep’t of Energy, 99 F.3d 387 (Fed. Circ. 1996) is not
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`applicable to them. However, Conoco was relied on in Patent Owner’s motion to
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`show that the residual exception is for truly exceptional cases. Indeed, Apple
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`should be well aware of this, given that it cites to Doe, which explains that the
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`residual exception should be used sparingly and that the exception is reserved for
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`exceptional cases. 976 F.2d at 1074.
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`Thus, Exhibits 1060 and 1063-1065 constitute hearsay with no exception.
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`II. Exhibits 1002-1004, 1006, 1010-1041, 1043-1048, 1050, 1051, 1053, 1054,
`1069, and 1071 and Portions of Exhibit 1005 Should be Excluded
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`Apple asserts that Dr. Tamassia considered Exhibits 1002-1004, 1006, 1010-
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`1041, 1043-1048, 1050, 1051, 1053, and 1054, and therefore they are admissible.
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`See Paper No. 33 at 7-9. However, these Exhibits were not cited by Dr. Tamassia
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`(in Ex. 1005) as forming the basis for his positions that are relevant to this
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`proceeding. See Actifio, Inc., v. Delphix Corp., IPR2015-00108, Paper No. 56 at
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`57 (Apr. 29, 2016) (excluding exhibits that were not relied upon). Thus, these
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`exhibits should be excluded and the unrelated portions of Dr. Tamassia’s
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`declaration to this proceeding should likewise be excluded.
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`As for Exhibits 1069 and 1071, Apple does not deny that it does not rely on
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`these exhibits in any of its papers. They should be excluded as irrelevant.
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`5
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`Dated: June 13, 2016
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`Case No. IPR2015-00866
`Patent No. 8,458,341
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
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`Counsel for VirnetX, Inc.
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`6
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`Case No. IPR2015-00866
`Patent No. 8,458,341
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 13th day of June 2016, a copy of the foregoing
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`Patent Owner’s Reply to Petitioner’s Opposition to Motion to Exclude was served
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`electronically, pursuant to agreement, upon the following:
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`Counsel for Apple Inc.:
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`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for VirnetX Inc.
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`Dated: June 13, 2016