Opposition to Invalidity SJM

8/14/2019 Opposition to Invalidity SJM

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TABLE OF CONTENTSPage

I. INTRODUCTION ........................................................................................................ 1

II. SUMMARY OF ARGUMENT .................................................................................... 1

III. ARGUMENT ............................................................................................................... 2

A. PAN Is Estopped From Asserting Invalidity Of The 347 And 612Patents .............................................................................................................. 2

B. Julkunen Does Not Anticipate The 612 Patent ................................................. 2

1. PAN Fails To Establish Publication Of Julkunen ByClear And Convincing Evidence ............................................................ 3

2. PAN Has Failed To Establish Julkunen Satisfies The Limitations Of The 612 Patent Claims ................................................ 10

C. Julkunen Combined With NAT Does Not Render Obvious Claims4-7 Of The 612 Patent .................................................................................... 17

D. Bechtolsheim Does Not Anticipate The 347 Patent ........................................ 20

1. PAN Has Failed To Show That Bechtolsheim DisclosesSorting . . . Into Initially Allowed And Initially DeniedPackets .............................................................................................. 22

2. Bechtolsheim Does Not Disclose A Filter Including ASecond Set of Rules For Receiving And Further Sorting The

Initially Denied Packets into Allowed Packets and DeniedPackets .............................................................................................. 24

3. Bechtolsheim Does Not Disclose The Additional Elementsof Claim 16 .......................................................................................... 25

IV. OBJECTIONS TO THE MITCHELL DECLARATION ............................................. 26

V. CONCLUSION .......................................................................................................... 27

Case 1:11-cv-01258-SLR Document 213 Filed 09/19/13 Page 2 of 33 PageID #: 9199


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TABLE OF AUTHORITIES

Page(s)

Cases

Apple, Inc. v. ITC , __ F.3d __, 2013 WL 4007535 (Fed. Cir. Aug. 7, 2013) ................................................ 20

Depuy Inc. v. Zimmer Holdings, Inc. ,343 F. Supp. 2d 675 (N.D. Ill. 2004) ................................................................................7

In re Cronyn ,890 F.2d 1158 (Fed. Cir. 1989) ........................................................................................3

In re Hall ,781 F.2d 897 (Fed. Cir. 1986) ..........................................................................................6

In re Lister ,583 F.3d 1307 (Fed. Cir. 2009) .................................................................................... 8, 9

In re Natures Remedies, Ltd. ,315 F. App'x 300, 2009 WL 615841 (Fed. Cir. 2009) ......................................................6

In re Omeprazole Patent Litig. ,490 F. Supp. 2d 381 (S.D.N.Y. 2007) ..............................................................................7

INVISTA N. Am. S.a.r.l. v. M&G USA Corp. ,2013 WL 3216109 (D. Del. June 25, 2013) .......................................................... 5, 11, 28

Norian Corp. v. Stryker Corp. ,363 F.3d 1321 (Fed. Cir. 2004) ........................................................................................3

Orion IP, LLC v. Hyundai Motor America ,605 F.3d 967 (Fed. Cir. 2010) ..........................................................................................6

Panduit Corp. v. Dennison Mfg. Co. ,810 F.2d 1561 (Fed. Cir. 1987) ...................................................................................... 18

Proveris Scientific Corp. v. Innovasystems, Inc. ,

536 F.3d 1256 (Fed. Cir. 2008) ............................................................................... passim RCA Corp. v. Data Gen. Corp. ,

701 F. Supp. 456 (D. Del. 1988) ......................................................................................3

Schumer v. Lab. Computer Sys., Inc. ,308 F.3d 1304 (Fed. Cir. 2002) .................................................................... 14, 17, 25, 28



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Spectralytics, Inc. v. Cordis Corp. ,649 F.3d 1336 (Fed. Cir. 2011) ..................................................................................... 18

SRAM Corp. v. AD-II Engg, Inc .,465 F.3d 1351 (Fed. Cir. 2006) ........................................................................................1

SRI Int'l, Inc. v. Internet Sec. Sys., Inc. ,511 F.3d 1186 (Fed. Cir. 2008) .................................................................................. 9, 10

St. Lukes Cataract & Laser Inst., P.A. v. Sanderson ,2006 WL 1320242 (M.D. Fla. May 12, 2006) ..................................................................9

Stambler v. RSA Security, Inc. ,212 F.R.D. 470 (D. Del. 2003) ....................................................................... 5, 11, 12, 28

State Contracting & Engg Corp. v. Condotte Am., Inc. ,346 F.3d 1057 (Fed. Cir. 2003) ...................................................................................... 15

TorPharm, Inc. v. Ranbaxy Pharma., Inc. ,336 F.3d 1322 (Fed. Cir. 2003) ...................................................................................... 19

Statutes

35 U.S.C. 102 ..................................................................................................................... 5, 16

35 U.S.C. 102(a) .................................................................................................................. 3, 4

35 U.S.C. 102(b) .................................................................................................................. 3, 4

35 U.S.C. 103 ......................................................................................................................... 16

Rules

Fed. R. Civ. P. 16 ........................................................................................................................5

Fed. R. Civ. P. 26 ...................................................................................................................... 26

Fed. R. Civ. P. 37(c)(1) ...............................................................................................................5

Fed. R. Evid. 901 ........................................................................................................................9



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I. INTRODUCTION

Plaintiff Juniper respectfully submits this brief in support of its opposition to Defendant

PANs Motion for Summary Adjudication of Anticipation and Obviousness for the 612 and

347 Patents (D.I. 171). As set forth below, Juniper also cross-moves for summary adjudication

of the anticipation defenses raised in PANs motion.

II. SUMMARY OF ARGUMENT

Because patents are presumed valid, a moving party seeking to invalidate a patent at

summary judgment must submit such clear and convincing evidence of facts underlying

invalidity that no reasonable jury could find otherwise. SRAM Corp. v. AD-II Engg, Inc ., 465

F.3d 1351, 1357 (Fed. Cir. 2006). PAN falls far short of its burden. PANs invalidity motion

fails on multiple, independent grounds as detailed in this brief, including the following:

1. PAN is estopped from asserting invalidity based on thedoctrine of assignor estoppel.

2. PANs motion depends on previously undisclosed opinions andevidence submitted for the first time in connection with itssummary judgment papers.

3. PAN produced no evidence during discovery that theJulkunen reference cited against the 612 patent is a prior art

printed publication (and PANs new evidence also fails toshow this).

4. PAN fails to establish by clear and convincing evidence thatthe cited prior art discloses numerous limitations of theasserted claims, including (by way of example only): rules,based on data extracted from the . . . sequence of data units,sorting [or processing] . . . into initially allowed packets,sorting [or processing] . . . into initially denied packets.PANs summary judgment papers do not even purport toaddress several required aspects of the asserted claims.

5. PANs obviousness inquiry fails to provide evidence ofmotivation to combine, and entirely ignores Juniperssubstantial evidence regarding objective indicia of non-obviousness, which the Federal Circuit has said must beconsidered in evaluating obviousness.



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Juniper therefore respectfully submits that PANs motion for summary judgment of

invalidity should be denied and that Junipers cross-motion should be granted. At a minimum,

PANs motion should be denied due to the many disputed issues of material fact that must be

decided by the jury at trial, as set forth below.

III. ARGUMENT

A. PAN Is Estopped From Asserting Invalidity Of The 347 And 612 Patents

As an initial matter, the Court does not need to consider PANs motion or Junipers cross

motion because the doctrine of assignor estoppel bars PAN from contesting invalidity. As set

forth in Junipers Motion for Summary Judgment of Assignor Estoppel (D.I. 172, 173), PAN is

estopped from asserting that the 612 and 347 patents are invalid because both patents were

assigned to Juniper by inventor Yuming Mao, PANs Founder and Chief Architect, who was

instrumental in developing PAN as a business, and in designing and selling PANs products

accused of infringing the 612 and 347 patents. Thus, a favorable ruling by the Court on

Junipers assignor estoppel motion will moot PANs motion in its entirety.

Nevertheless, because PANs invalidity motion is scheduled to be heard on the same date

as Junipers assignor estoppel motion, Juniper will in the remainder of this brief address each of

the independent reasons why PANs invalidity defense with respect to the 612 and 347 patents

should be rejected, and why summary judgment of no anticipation should be granted in favor of

Juniper.

B. Julkunen Does Not Anticipate The 612 Patent

PANs motion for summary judgment with respect to anticipation of the 612 patent

should be denied. The sole reference PAN relies upon in support of its motion is a University of

Colorado academic paper entitled Enhance Network Security with Dynamic Packet Filter.



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(a) PAN Presented No Evidence of Publication During Fact AndExpert Discovery

PANs invalidity argument for the 612 patent fails at the threshold because PAN failed

to present any evidence during discovery that Julkunen qualifies as a prior art publication

under 35 U.S.C. 102(a) and (b).

Although PAN alleged in its initial invalidity contentions that Julkunen is a prior art

publication, PAN identified no evidence of publication during fact discovery. Juniper

highlighted this deficiency to PAN in a contention interrogatory response, stating: PAN has not

established that Julkunen/Chow is prior art to the 612 patent. Ex. 1 (Juniper Supp. Resp. to

Rog. No. 7). 2 After receiving Junipers interrogatory response, PAN supplemented its invalidity

contentions twice, but never provided any evidence regarding the alleged prior art publication

of Julkunen. Nor did PAN identify any relevant facts or documents in response for requests for

documents and information supporting PANs invalidity defenses. Ex. 2 (Juniper Rog. No. 1);

Ex. 3 (Juniper RFP Nos. 26-27).

Nor did PAN identify any evidence or opinion on this subject during expert discovery.

Specifically, PANs expert Dr. Mitchell failed to present any evidence or analysis in his opening

expert report regarding Julkunens alleged status as a prior art publication. Juniper again pointed

out, in its rebuttal expert report, that PAN had not met its burden of establishing that the

Julkunen reference is actually prior art to the 612 patent as PAN had not identified any

evidence or analysis regarding any purported public accessibility of Julkunen. Stubblebine

Decl. Ex. A 722-725. 3 PANs invalidity expert subsequently prepared and served an

2 Ex. __ refers to exhibits attached to the Declaration of Jennifer Ying, submittedherewith.

3 Stubblebine Decl. Ex. A refers to excerpts from the May 13, 2013 Rebuttal ExpertReport of Stuart Stubblebine Regarding Validity, attached to the Expert Declaration ofStuart G. Stubblebine, submitted herewith.



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additional supplemental expert report, but still provided no analysis or evidence relating to the

alleged publication of Julkunen.

It was not until PAN submitted the Mitchell Declaration in support of its summary

judgment motionlong after fact and expert discovery had closedthat PAN first presented any

argument or evidence regarding the purported publication of Julkunen. D.I. 180 (Mitchell

Decl.) 32-36 & Exs. 5-8. PAN offers no excuse for why these multiple paragraphs of

opinions and dozens of pages of exhibits were not timely presented during fact and expert

discoveryand there is none. Accordingly, these new facts and opinions are not properly

considered for the first time at the summary judgment stage. INVISTA N. Am. S.a.r.l. v. M&GUSA Corp. , 2013 WL 3216109, at *5 (D. Del. June 25, 2013) (striking supplemental declaration

with contentions submitted for first time at summary judgment stage); Stambler v. RSA Security,

Inc. , 212 F.R.D. 470, 472 (D. Del. 2003) ([T]here comes a time [in every case] when discovery

must be closed for the issues to be resolved through summary judgment and/or trial. In the case

at bar, that time has long since passed.); see also Fed. R. Civ. P. 16, 37(c)(1).

Because PANs only purported evidence of publication is untimely and not admissible,

PAN cannot establish that Julkunen was publicly accessible at a time that would qualify it as a

prior art publication under 35 U.S.C. 102(a) and (b) (much less prove this point by

undisputed, clear and convincing evidence). Accordingly, and because proof of publication

before the critical date is a required element of the anticipation defense, partial summary

judgment should affirmatively be granted in favor of Juniper that Julkunen does not anticipate

the 612 patent.



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(b) Even PANs Untimely Summary Judgment Evidence Fails ToEstablish Publication

Even if PANs untimely evidence of publication were considered, it would fall far short

of establishing by clear and convincing evidence that Julkunen was sufficiently accessible by

the relevant public during the relevant time frame to constitute a prior art publication. PAN

presents no evidence from a librarian, school official, archivist, publisher, or anyone else with

personal knowledge of facts suggesting public accessibility of Julkunen. Instead, PAN relies

solely on the declaration of its technical expert Dr. Mitchell, who does not purport to have any

personal knowledge of Julkunen or to be an expert on procedures of libraries and other document

repositories and archives. Such second-hand evidence is intrinsically inadequate to satisfy the

publication requirement.

The Federal Circuit has consistently held that, in order to show public accessibility,

testimonial or other evidence must be supported by personal knowledge of facts showing that

the public had access to the reference as of the critical date. See, e.g. , In re Hall , 781 F.2d 897,

898 (Fed. Cir. 1986) (public accessibility of dissertation established by librarians affidavit

regarding his personal knowledge of the specific dissertation of interest and his description of

the routine treatment of dissertations in general); Orion IP, LLC v. Hyundai Motor America ,

605 F.3d 967, 974-75 (Fed. Cir. 2010) (public accessibility of catalog established by testimony

of manager that he personally demonstrated the steps of the catalog to car dealers); In re

Natures Remedies, Ltd. , 315 F. Appx 300, 303, 2009 WL 615841, at *3 (Fed. Cir. 2009) (public

accessibility of reference established by declaration of committee secretary, which was based

upon her personal knowledge).

By contrast, where a witness does not have such personal knowledge of the relevant facts,

courts consistently reject testimony proffered to prove publication under 102. See, e.g.,



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Depuy Inc. v. Zimmer Holdings, Inc. , 343 F. Supp. 2d 675, 682 (N.D. Ill. 2004) (brochure was

not a printed publication where corporate representative did not support his testimony about

printing and distribution of the brochure with either personal knowledge or knowledge from

the corporations records or other employees); In re Omeprazole Patent Litig. , 490 F. Supp. 2d

381, 520-21 (S.D.N.Y. 2007) (materials did not qualify as printed publications where corporate

representative had no personal knowledge regarding [their] distribution or publication and

nobody at the company knew how they were distributed). Given that Dr. Mitchell has not even

professed to have any personal knowledge regarding any facts tending to show publication of

Julkunen, this case falls clearly in the category of those where no publication was found.Moreover, even if the materials attached to the Mitchell Declaration are to be considered

(notwithstanding Dr. Mitchells lack of personal knowledge), they still fail to satisfy PANs

burden regarding publication. See Stubblebine Decl. 15-21. For example, PAN describes

Exhibit 8 as an excerpted version of Julkunen that was purportedly published in 1998 in an

IEEE journal. Mitchell Decl. 36 & Ex. 8. But of course, even assuming it were true that a

different, shorter document by the same authors was published in 1998 (a factual issue on which

Dr. Mitchell does not even purport to have personal knowledge), that fact could not provide valid

support for Dr. Mitchells conclusions regarding the purported publication of Julkunen itself. 4

As another example, Exhibit 7 is a single-page printout from an online repository called

CiteSeer. The printout is dated August 2013 and includes a citation that Dr. Mitchell claims

currently refers to Julkunen. Mitchell Decl. 35 & Ex. 7. Yet there is no indication of whether

this document was actually available through CiteSeer before the critical date, which is the only

4 Neither PAN nor Dr. Mitchell has ever argued that this alleged excerpted versionanticipates the 612 patent, much less set forth any analysis as to whether the excerptsthat were purportedly published in this shorter article bear any relationship to the

purportedly anticipatory disclosures of Julkunen.



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availability that matters for purposes of the publication analysis. See In re Lister , 583 F.3d

1307, 1316-17 (Fed. Cir. 2009) (reference not a prior art publication where it was publicly

available in searchable databases, but there was no evidence that this was true prior to the

critical date). Moreover, Dr. Mitchell does not actually provide a copy of the cited document

and fails to demonstrate that the citation even refers to Julkunen (as opposed to, for example, a

different paper or excerpted version). Indeed, to the contrary, Exhibit 7 suggests it is referring to

a document that is four pages long, as opposed to the actual Julkunen paper (which is over 70

pages long). See id. (citing pages . . . 12--15). Accordingly, this exhibit similarly fails to

provide support for Dr. Mitchells assertions regarding publication.Dr. Mitchell also attaches a copy of a website that includes a link to a gzip archive that

purportedly includes Julkunen. Mitchell Decl. Ex. 5. 5 The link in question appears in a section

entitled Master Thesis/Projects currently supervised appearing about halfway down the

website, which appears to be an online resume for Dr. C. Edward Chow (associate professor at

the University of Colorado and co-author of Julkunen). Dr. Mitchell relies on this website to

assert in conclusory fashion that Julkunen has been continuously accessible and available for

download from at least February 1999 to the present. Mitchell Decl. 34. This argument

fails for multiple reasons.

As an initial matter, Dr. Mitchell does not have (nor does he purport to have) any

personal knowledge whatsoever regarding this website, nor is there any other competent

evidence that the webpage in question was even available in a time frame that would qualify it as

prior art to the 612 patent. Dr. Mitchell merely attaches an August 2013 printout of an Internet

5 As Juniper expert Dr. Stubblebine points out in his rebuttal to Dr. Mitchell, this fileformat is not readable on (for example) Windows computers without the installation ofspecialized software. Stubblebine Decl. Ex. A 19.



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Archive link allegedly from the year 1999, but unaccompanied by any authentication by anyone

with personal knowledge of the Internet Archive sufficient to support such an allegation. See

St. Lukes Cataract & Laser Inst., P.A. v. Sanderson , 2006 WL 1320242, at *2 (M.D. Fla. May

12, 2006) (In order to satisfy the requirement of Fed. R. Evid. 901 . . . Plaintiff must provide the

Court with a statement or affidavit from an Internet Archive representative with personal

knowledge of the contents of the Internet Archive website.) (emphasis in original). The only

other evidence Dr. Mitchell provides is a citation to the website link appearing in an article

published in 2002, i.e., years after the latest possible priority date for the 612 patent. (Dr.

Mitchell also states that the website is currently live on the Internet, but of course, whether or notJulkunen may be currently available online is not evidence of status as a prior art publication.) 6

Moreover, PANs bid for summary judgment of anticipation would fail even if PAN had

properly authenticated evidence showing that this website was live before the critical date. That

is because, under Federal Circuit law, the publication standard is not satisfied by merely

posting to an online server; there must be evidence that the document can be located and

identified in some meaningful way such as by cataloguing or indexing. See SRI Intl, Inc. v.

Internet Sec. Sys., Inc. , 511 F.3d 1186, 1195-97 (Fed. Cir. 2008). In this case, there is no

cataloguing or indexing information cited on the webpage itself or any other source. Mitchell

6 Dr. Mitchell likewise fails to support his opinions regarding alleged publication of otherreferences cited in the Mitchell Declaration. For example, the only cited evidenceregarding Check Point Firewall-1 White Paper is another unauthenticated link to the

Wayback Machine. Mitchell Decl. 63 n.16. As another example, the only citedevidence regarding Brenton is an unauthenticated, unexplained printout from theLibrary of Congress website, which discloses little or no meaningful indexinginformation relevant to those of skill in the art or indication of actual date of availability.Mitchell Decl. 191 n.34; see also In re Lister , 583 F.3d 1307, 1316-17 (Fed. Cir. 2009).For other references, Dr. Mitchell merely makes conclusory statements about alleged

publication dates, without even attempting to cite any evidence of public accessibility.See, e.g. , Mitchell Decl. 179-180 nn. 27-28.



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Decl. Ex. 5. Nor is there any other indication that one of skill of art prior to the critical date

would have been able to find the gzip version of Julkunen on this website (where it is listed

under the cryptic heading EAS-CS-97-2), much less the website itself. 7

Given this lack of evidence as to the purported accessibility of Julkunen, summary

judgment of no anticipation should be granted in favor of Juniper. At a minimum, the several

disputed factual questions regarding whether Julkunen was publicly available before the critical

date precludes summary judgment in favor of PAN on the anticipation issue.

2. PAN Has Failed To Establish Julkunen Satisfies The Limitations Of The612 Patent Claims

Even if PAN were able to clear the threshold hurdle of establishing that Julkunen was a

publication, its summary judgment motion should still be denied because PAN has not

satisfied its burden to show by undisputed, clear and convincing evidence that Julkunen discloses

all of the limitations of the 612 patent claims. 8

In support of its motion, PAN again attempts to rely upon the new declaration submitted

by its invalidity expert, Dr. Mitchell. However, as explained above, the Mitchell Declaration

contains new opinions that were not timely disclosed in Dr. Mitchells opening or supplemental

expert report. The new opinions are not limited to the publication issue, but also include new

7 The evidence that PAN has presented on the publication issue is even less than whatthe Federal Circuit found inadequate to support summary judgment in the SRI case. InSRI , the alleged prior art had been posted on a public FTP site that freely permitteddownloading over the Internet, and there was even evidence that an individual who had

been informed of the paper actually accessed it online. Id. at 1195-96. Here, there is no evidence prior to the critical date that the public was aware of or would have known toaccess the cited website, or that anyone ever actually accessed Julkunen via that website.

8 Throughout its brief, PAN describes and summarizes the 612 patent invention usingconcepts not present in the claims themselves. For example, PAN states that the 612

patent claims require that a system add new rules when it receives packets that do nothave a match to one of its [existing] rules. See D.I. 171 at 11; see also, e.g. , id. at 12.The 612 patent claims do not set forth any such requirement.



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substantive opinions regarding Julkunens alleged disclosures. Indeed, some material in the

untimely Mitchell Declaration actually contradicts positions that Dr. Mitchell took during expert

discovery. None of this untimely material may be properly considered at the summary judgment

stage. INVISTA , 2013 WL 3216109, at *5; Stambler , 212 F.R.D. at 472. Moreover, even if this

untimely material were considered, PAN still falls far short of its summary judgment burden as

shown below. See Stubblebine Decl. 13-14, 22-27 & Ex. A 706-828.

(a) PAN Has Failed To Show That Julkunen Satisfies TheRequirement That Rules Exist Across Multiple Sessions

First, PAN has failed to satisfy the rules limitation that appears in each of the asserted

claims. PAN and Juniper have agreed that rules, as understood in the context of the 612

patent claims, must exist across multiple sessions. D.I. 164 (PAN Resp. Markman Br.) at 25.

Yet PAN has not demonstrated that the alleged rules in Julkunen in fact exist across multiple

sessions, as opposed to just a single session. Given this deficiency, PAN cannot prevail on its

motion with respect to the 612 patent. 9

In its invalidity expert report, PAN ignored the across multiple sessions aspect of the

claims, except to observe that the parties had agreed this concept is part of the claim construction

for rules. See, e.g. , Ex. 4 (Mitchell Rpt.) 686 n.43. 10 Indeed, Dr. Mitchell acknowledged in

his report that the alleged rules in Julkunen exist only for a single FTP session. See id.

187 (citing Julkunen Fig. 3.1 as showing [w]hen an FTP session is established).

9 PAN claims that the parties do not dispute that Julkunen discloses establishing a set ofrules, D.I. 171 at 9, but Juniper disputed precisely this point in its validity expert report,and continues to dispute it today. See Stubblebine Decl. 22-30 & Ex. A 728-732,791-793.

10 In this paragraph, Dr. Mitchell also mentions in passing the words across sessions, butdoes not actually identify or explain any material in Julkunen purported to disclose rulesthat exist across multiple sessions.



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rules are specifically associated with a particular session, and do not extend across multiple

sessions. At the very minimum, the discrepancy between Dr. Mitchells opening expert report

(single session), Junipers rebuttal report (single session), and the new Mitchell Declaration

(multiple sessions) creates an issue of fact precluding summary judgment. 11

PAN advances four additional arguments in its brief relating to the multiple sessions

requirement. All four arguments rely on the new, untimely opinions of Dr. Mitchell, and thus

can be disregarded on that basis alone. In any event, as shown below, none of the four

arguments is persuasive.

First, the Mitchell Declaration contends for the first time that disclosure in Julkunenrelating to NFS sessions allegedly satisfies the across multiple sessions requirement. 12 But

as was the case with FTP, Julkunen explains that rules pertaining to NPS actually time out

once the NPS session is no longer active (e.g., by not accessing anything on the mounted

drive). Julkunen at 43. At that point, once the session is finished, [a]ll rules have timed out,

and the only rule left is the statically added rule. Id. ; see also Stubblebine Decl. 26. Thus,

not only is there nothing in Julkunen that teaches that an NFS rule will exist across multiple

11 Moreover, Dr. Stubblebine has submitted a rebuttal declaration in which he addresses thenew PAN opinions submitted in connection with PANs motion, and demonstrates whythey do not alter his original opinion that Julkunen fails to satisfy this element.Stubblebine Decl. 13-14, 22-27.

12 PAN criticizes Junipers expert for focusing on allegedly suggest[ing] that Julkunens

dynamic rules are limited to . . . FTP (D.I. 171 at 11), ignoring that the reason thatJunipers expert was discussing FTP was that he was rebutting PANs invalidity report,which only set forth an anticipation theory based on FTP. For example, Dr. Mitchellsoriginal opinion made no mention of NFS sessions for independent claim 1, 13, or 22,so there was no theory on that point for Dr. Stubblebine to rebut. It is only in the newMitchell Declaration that PAN attempts to advance its NFS theory for those claims.Again, Dr. Mitchells new opinions should be disregarded, and are incorrect in any eventas explained in the text above.



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sessions, but Julkunen actually teaches that NFS rules affirmatively time out and expire once

the session is finished.

Second, PAN argues that the alleged rules in Julkunen can apply to different ports, and

therefore concludes that they exist across multiple sessions. See, e.g. , D.I. 171 at 10, 12. In

making this argument, PAN relies on Dr. Mitchells new opinion that [a] person having

ordinary skill in the art at the time would have understood that multiple ports would have

multiple sessions. Mitchell Decl. 142. This statement (which, again, does not appear in Dr.

Mitchells original report) is merely a perfunctory assertion, unsupported by any evidence or

analysis. Schumer v. Lab. Computer Sys., Inc. , 308 F.3d 1304, 1315-16 (Fed. Cir. 2002);Proveris Scientific Corp. v. Innovasystems, Inc. , 536 F.3d 1256, 1267-68 (Fed. Cir. 2008). But

even if it were considered, it is irrelevant to the validity analysis; as Dr. Stubblebine explains in

his rebuttal declaration, the alleged rules in Julkunen are designed to last only for the lifetime of

an active session regardless of port affiliation. Stubblebine Decl. 25. And the examples that

PAN identifies of applications running on other ports (such as Telnet, see D.I. 171 at 12) in

fact behave in a manner consistent with Dr. Stubblebines description, e.g., for Telnet, Julkunen

describes rules added by the DPF for a telnet session , which are set to be removed (time-

out) when the telnet session is closed . Julkunen at 34. 13

Third, PAN relies on Dr. Mitchells new opinions regarding FTP to argue that certain

disclosures in Julkunen supposedly align with certain aspects of the 612 patent specification .

D.I. 171 at 12-13. But of course, a proper anticipation analysis must be performed by comparing

13 PAN also points to disclosure in Julkunen that rules can be configured to allow a rulematch for multiple ports, see D.I. 171 at 10, but cites no expert support for thisargument. See Schumer , 308 F.3d at 1315-16; Proveris , 536 F.3d at 1267-68. In fact, thecited portion of Julkunen is referring only to user-added static rules, and not the DPFentries that PAN alleges constitute dynamic rules. Julkunen at 14.



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the prior art reference in question to the claims , not the specification. State Contracting & Engg

Corp. v. Condotte Am., Inc. , 346 F.3d 1057, 1068 (Fed. Cir. 2003). 14 As shown above, PAN

fails to show that Julkunen satisfies the actual claim language. Regardless, PANs argument is

mistaken as a factual matter, as Julkunens description of rules that time out and are deleted at

the end of an FTP session appears nowhere in the cited portion of the 612 patent specification

(and PAN does not identify any such disclosure).

Finally, PAN asserts that Junipers infringement expert Dr. Avi Rubin opined that the

multiple sessions requirement is satisfied by any rule that provide[s] a period of time in which

the rule is to be enforced. D.I. 171 at 10. This assertion is simply wrong.15

PAN crops therelevant quote from the Rubin Report to obscure the fact that Dr. Rubin was describing the

as opposed to any general statement about

multiple sessions or prior art. Id. Dr. Rubin further explained that

(see id. )a

conclusion that PANs own expert does not dispute, and which (as explained above) is a

completely different approach from Julkunen.

(b) PAN Has Failed To Show That Julkunen Discloses Adding RulesBased On Multiple Data Units (Packets)

There is a second, independent limitation in each of the asserted claims of the 612 patent

that PAN has failed to satisfy: rules must be added based on data from multiple data units

14 PAN also notes that unasserted claim 10 mentions FTP packets. D.I. 171 at 13. This isirrelevant, as whether or not FTP packets can be processed by the invention described inthe 612 patent does not dictate whether Julkunens implementation of FTP satisfies theelements of the 612 patent, including the across multiple sessions aspect of rules.Indeed, even PANs expert does not so contend.

15 As Juniper explained in its motion for summary judgment of infringement, PAN did notdispute most elements of the 612 patent claims, including the across multiple sessionsaspect. D.I. 177 at 8 n.4.



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(packets) as opposed to just one packet alone. See, e.g. , claims 1, 13 (sequence of data units);

see also claims 22, 27 (data units). 16

Junipers validity expert Dr. Stubblebine explained in his rebuttal report that PAN and its

expert failed to satisfy this aspect of the 612 patent claims. See Stubblebine Decl. Ex. A 742-

744. 17 Here, unlike the approach that PAN took for across multiple sessions (where PAN

attempted to remedy the failure through untimely new opinions), PAN simply identifies no

expert support for its position at all. See D.I. 171 at 14. 18 Instead, PAN presents another new

argument, pointing to a single page of Julkunen as allegedly disclosing one or more packets

that may be used to create new rules. Id. (citing Julkunen at 21). But PAN offers noexplanation for what disclosure on page 21 of Julkunen it believes satisfies this limitation, and

PANs citation is unaccompanied by any expert evidence that could arguably interpret this

irrelevant disclosure of Julkunen in a manner helpful to PAN. Thus, PANs conclusory, attorney

assertion that Julkunen discloses rules being added based on multiple packets falls far short of its

required burden on summary judgment. Proveris , 536 F.3d at 1267-68 (affirming JMOL of no

anticipation where defendant failed to present expert testimony in order to establish invalidity);

Schumer , 308 F.3d at 1315-16 (reversing summary judgment based on merely conclusory

evidence of invalidity; defendant was required to identify each claim element, state the

16 In its brief, PAN hedges on whether a packet is a data unit but ultimately presents nodispute on this point. D.I. 171 at 14.

17 For example, PAN points to an FTP PORT command in connection with this claimlimitation, but fails to provide any basis for believing that that this command includes asequence of multiple packetsa view that would be contrary to the understanding of theFTP protocol for those of ordinary skill in the art. Stubblebine Decl. Ex. A 743.

18 This is perhaps not surprising, as the only disclosure cited in the Mitchell Report andMitchell Declaration for this element is a reference to particular short segments of data ina single PORT command rather than anything involving multiple packets. Ex. 4(Mitchell Rpt.) 688; Mitchell Decl. 144. Thus, there is no expert testimony of recordthat is helpful to PAN on this point.



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witnesses interpretation of the claim element, and explain in detail how each claim element is

disclosed in the prior art reference). Accordingly, this claim element provides yet an additional,

independent basis for rejecting PANs motion for summary adjudication as to the 612 patent.

(c) PAN Has Failed To Establish The Other Elements Of The 612Patent Claims By Clear And Convincing Evidence

Finally, PANs motion for summary judgment of anticipation can be further rejected

because there are other aspects of the 612 patent claims that are nowhere addressed in PANs

papers. For some of these limitations (e.g., access control engine), PAN simply fails to explain

what disclosure or aspect of Julkunen purportedly satisfies these limitations. See, e.g. , D.I. 171

at 9-11. And as to the additional limitations of the other independent and dependent claims (e.g.,

claims 8, 12, and 26), PAN provides only cursory discussion that fails to match up particular

disclosures of Julkunen against each individual limitation. D.I. 171 at 15-16. PAN tries to

excuse its superficial approach by arguing that these limitations are not contested, but in fact they

are. See, e.g. , Stubblebine Decl. Ex. A 753-761 (claim 8); 776-779 (claim 12); 808-811

(claim 26). Accordingly, PANs motion for summary judgment should be rejected as to all of

the asserted claims.

C. Julkunen Combined With NAT Does Not Render Obvious Claims 4-7 Of The612 Patent

With respect to claims 4-7 of the 612 patent, PAN does not even attempt to argue

anticipation, but instead advances an obviousness theory combining Julkunen with a process

known as Network Address Translation (NAT). D.I. 171 at 16-17.

All of the arguments set forth in Section III.B.1 above apply equally to bar summary

judgment of obviousness with respect to claims 4-7. For example, because PANs obviousness

theory expressly depends on Julkunens alleged status as a prior art publication, it follows that

PAN cannot prevail where (as here) PAN completely failed during the discovery phase to present



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any fact or expert evidence regarding publication. See Panduit Corp. v. Dennison Mfg. Co. , 810

F.2d 1561, 1568 (Fed. Cir. 1987) (before applying 103 obviousness inquiry, must determine

whether a patent or publication is in the prior art under 35 U.S.C. 102). Moreover, because

claims 4-7 are all dependent claims that incorporate the limitations of claim 1, the deficiencies

identified above as to PANs anticipation arguments for claim 1 apply equally to undermine

PANs obviousness arguments for claims 4-7.

PANs obviousness case suffers from other deficiencies as well, many of which are

highlighted in the May 2013 expert report of Junipers validity expert Dr. Stubblebine. See

Stubblebine Decl. Ex. A 831-836. For example, PANs expert contends that Julkunensreference to proxying means that one of skill in the art would have been inclined to try

combining Julkunen with NAT functionality. Mitchell Decl. 191; see also D.I. 171 at 16. But

PANs expert goes on to concede that the sole alleged motivation for adding NAT (hiding the

address information within the private network to improve security) was something that

Julkunen had already solved through the use of proxying. Id. (One positive factor about

proxying is that it keeps the names or IP addresses of the hosts on the intranet away from the

internet, which Julkunen explains makes it harder for an attacker to select a host to attack.)

(quoting Julkunen at 9). In other words, far from providing motivation to combine with NAT,

Julkunen actively teaches away from the use of NAT by opting for a proxying solution

instead. See Spectralytics, Inc. v. Cordis Corp. , 649 F.3d 1336, 1343 (Fed. Cir. 2011) (affirming

judgment of validity and noting that [w]hether the prior art teaches away from the claimed

invention is a question of fact); see also Stubblebine Decl. Ex. A 833. And Dr. Mitchell

openly admits that Julkunen makes no reference to NAT itself. See id. (Julkunen does not

disclose network address translation).



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PAN also relies on its expert in arguing that there was no technical impediment to

adding NAT to a Linux-based system such as Julkunen. D.I. 171 at 16; Mitchell Decl. 191.

But the very evidence that PAN cites to show lack of technical impediment in fact reveals a

technology project that describes itself as a dead-end. Stubblebine Decl. Ex. A 835. 19 And

although Dr. Mitchell maintains that Linux implementations for NAT already were known and

provided for by the kernel (Mitchell Decl. 191), the evidence he cites says just the opposite:

The code on this site is not part of the official kernel. Stubblebine Decl. Ex. A 836.

PANs further suggestion that Juniper is estopped from presenting non-obviousness

arguments about NAT for claims 4-7 unless it expressly advanced those arguments during prosecution of the 612 patent (D.I. 171 at 16) simply contradicts established precedent. The

Federal Circuit has made clear that a patentee is not required to fight tooth and nail every

possibly adverse thought an examiner commits to paper, nor to advance redundant arguments for

patentability. TorPharm, Inc. v. Ranbaxy Pharma., Inc. , 336 F.3d 1322, 1330 (Fed. Cir. 2003).

It is simply not the case that a patentee may advance during litigation only those arguments in

support of patentability that were made before the Patent Office, id. (emphasis added), and

PANs argument therefore fails as a matter of law. 20

A final, independent reason PAN is not entitled to summary judgment of obviousness is

that its moving papers present no evidence or analysis regarding the so-called objective indicia

of non-obviousness. The Federal Circuit has repeatedly held that . . . objective evidence of

secondary considerations . . . must be considered before determining whether the claimed

19 See (cited in Mitchell Decl. 191 n.35).20 Although PAN should not be permitted to rely on any of its new, previously undisclosed

opinions relating to obviousness, see Mitchell Decl. 177-208, to the extent theseopinions are considered, Junipers validity expert Dr. Stubblebine has explained in arebuttal declaration why PANs arguments fail on the merits. See Stubblebine Decl.

28-34.



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invention would have been obvious . . . . See, e.g. , Apple, Inc. v. ITC , __ F.3d __, 2013 WL

4007535, at *7 (Fed. Cir. Aug. 7, 2013) (reversing judgment of obviousness) (emphasis added).

Juniper has presented substantial evidence of objective indicia of non-obviousness, including

significant evidence that PAN co-founders (and former Juniper employees) Nir Zuk and Yuming

Mao

See, e.g. , Stubblebine Decl. Ex. A 1353-1378.

Having completely ignored this critical evidence in its motion, PAN has failed to prove it is

entitled to summary judgment of obviousness.

D.

Bechtolsheim Does Not Anticipate The 347 PatentPANs motion for summary judgment with respect to anticipation of the 347 patent by

U.S. Pat. No. 6,377,577 (Mitchell Decl. Ex. 2 (hereinafter Bechtolsheim)) also is without

merit. Far from presenting undisputed, clear and convincing evidence of disclosure by

Bechtolsheim of the elements of the 347 patent claims, PAN actually presents no evidence on

several claim limitations.

By way of background, it should be noted that PAN did not identify Bechtolsheim as

prior art to the 347 patent in its invalidity contentions served pursuant to the Delaware Default

Standard, but rather identified nine other references instead. PAN also submitted those nine

references to the Patent and Trademark Office (PTO) in a request to initiate inter partes

reexamination, which was rejected by the PTO. As a result, PAN went back to the drawing

board and ultimately disclosed Bechtolsheim to Juniper just two weeks before the close of fact

discovery.

It is not surprising that PAN did not include Bechtolsheim in its reexamination request or

original invalidity contentions, as Bechtolsheim discloses an approach that is strikingly different

from the 347 patent. The 347 patent discloses, among other things, a two-step technique in



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which packets can be first sorted into initially denied and initially allowed packets, then further

sorted into allowed and denied packets. See 347 patent; accord D.I. 171 at 18. The 347 patent

distinguishes its approach from a prior art one pass approach that does not sort packets into

initially denied and initially allowed packets. E.g. , 347 patent at 5:30-39.

By contrast, Bechtolsheim describes (as reflected in its title Access Control List

Processing In Hardware) a specific hardware variant of the one pass approach that the 347

patent describes as prior art. 21 Bechtolsheim uses specialized hardware to store its access control

list (which it refers to as a set of access control specifiers). E.g. , Bechtolsheim at Abstract,

2:29-35. Unlike implementations where entries on an access control list are considered one at atime, Bechtolsheims hardware polls its access control specifiers all . . . at once and selects the

highest priority match for a given packet. Id . at Abstract; see also id. at 2:27-35, 2:38-50, Figs.

2, 3; 6:47-53. The output of this process is exactly the same as in other prior art

implementations: the single selected match is used to permit or deny access for the packet. Id .

at 2:47-48. Importantly, in Bechtolsheim (as in other prior art implementations), the only denial

is final : if the access control element . . . determines that the packet [] should be dropped, the

packet is dropped, and the routing element [] takes no further action with regard to the packet.

Id . at 6:60-64. 22

In sum, Bechtolsheim does not contemplate (much less disclose) a first sorting or

processing phase involving initially denied and initially allowed packets, a subsequent phase

21 PANs brief characterizes the opening paragraph of Bechtolsheim as purportedlydescribing a two-pass filter system. D.I. 171 at 17 (citing Bechtolsheim at 1:4-15).But there is nothing in the cited passage that uses that term or remotely suggests a two-

pass approach; it is simply a description of the prior art one pass approach to accesscontrol. Id.

22 Bechtolsheim describes the access control memory and priority encoder as part of thissingle access control element that operates to select the highest priority rule match. SeeBechtolsheim at 6:42-53; Fig. 2.



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to further sort or process initially denied and initially allowed packets, or any of the other unique

elements of the asserted claims of the 347 patent. As shown below, these distinctions are

underscored by the analysis of Junipers validity expert Dr. Stubblebine provided during

discovery, as well as the disclosure of Bechtolsheim itself. See Stubblebine Decl. 11-12 &

Ex. A 593-656, 699-705.

1. PAN Has Failed To Show That Bechtolsheim Discloses Sorting . . . Into Initially Allowed And Initially Denied Packets

PAN has not satisfied its burden to demonstrate by clear and convincing evidence that

Bechtolsheim discloses sorting incoming IP packets into initially allowed and initially denied

packets. See 347 patent, claim 1; see also, e.g. , Stubblebine Decl. Ex. A at 605-611. 23

As an initial matter, PANs summary judgment brief does not even address the initially

allowed aspect of the claims. PAN does not identify in its brief any alleged disclosure by

Bechtolsheim of initially allowed packets, or sorting packets into initially allowed packets.

Thus, and because all of the asserted claims of the 347 patent include initially allowed packet

limitations, PANs motion should be denied at the outset. Moreover, because initially allowed

packets are a required aspect of every asserted claim, PANs anticipation defense can and

should be summarily adjudicated and dismissed because PAN cannot meet its burden of proof.

Proveris , 536 F.3d at 1267-68.

23 PANs brief addresses only method claim 14, and does not even purport to address the

additional limitations of claim 1, e.g., a first engine including a first set of rules and afilter including a second set of rules. Apart from that omission unique to claim 1, theinaccuracies and omissions discussed in this Section III.D apply to the other assertedindependent claims, 14 and 24. Similarly, PAN does not address the distinct language ofclaim 24, including its processing and further processing steps. Nevertheless, thoughthe 347 patent claims have varying scope, there are common deficiencies in PANsinvalidity arguments for all of them, as shown herein.



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23

PANs argument with respect to initially denied packets 24 is also without merit,

because Bechtolsheim never sorts packets into initially denied packets. PAN suggests that

packets are sorted as initially denied when a packet label matches masks in the access

control memory relating to both deny rules and allow rules. D.I. 171 at 19 (citing Mitchell Decl.

108). However, PANs argument is incorrect because (among other reasons) Bechtolsheims

all at once process simultaneously matches labels to masks for multiple access control

specifiers. E.g. , Bechtolsheim at Abstract. That means that, under PANs theory, an initially

denied packet also would be an initially allowed packet. In addition to being nonsensical, this

would negate entirely the required element of sorting the packets into initially denied andinitially allowed packets as separate categories. Accordingly, Bechtolsheim does not perform the

sorting into initially denied and initially allowed packets claimed in the 347 patent.

Moreover, the access control memory itself does not sort packets at all. Rather, it merely

compares parts of the header for a single packet (packet labels, see Bechtolsheim at Fig. 2) in

parallel to match patterns within access control specifiers, and transmits that information to the

priority encoder. Id . at Fig. 2, 4:34-55, 6:47-53. It is the priority encoder that selects the access

control specifier [] with the highest priority, and provides an indicator to the output port that

specifies whether or not the packet has permission to be forwarded. Id . at 4:51-52; see also

id . at 6:50-53 (priority encoder determin[es] the highest-priority match, and provid[es] an

output result). Thus, there is no status attributed to a packet by the access control memory

(much less an initial deny status). Rather, the access control memory collects data from

24 PAN suggests that its anticipation theory is dependent on a construction of initiallydenied as mere association of a packet with a rule that could result in a denial.However, neither PAN nor Juniper has proposed this phrasing as a construction, neither

partys expert has addressed it, and PAN does not explain its intended scope. Ultimately,moreover, this issue is irrelevant. As discussed herein, PANs anticipation defense failsfor a host of reasons unrelated to claim construction.



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individual access control specifiers (generated all at once) and provides it to the priority

encoder for identification of a single, final outcome for that packet (e.g., dropped with no

further action). Bechtolsheim at 6:60-64. That is a very different approach from the method

and apparatus set out in the 347 patent claims.

Because PAN has not identified any sorting into initially denied and initially allowed

packets, PANs motion should be denied. Additionally, because PAN has not even addressed

much less demonstrated by clear and convincing evidenceany alleged disclosure of initially

allowed packets, Junipers cross-motion for summary judgment that Bechtolsheim does not

anticipate the 347 patent should be granted. Proveris , 536 F.3d at 1267-68.2. Bechtolsheim Does Not Disclose A Filter Including A Second Set of

Rules For Receiving And Further Sorting The Initially Denied Packetsinto Allowed Packets and Denied Packets

PAN also has not satisfied its burden to show that Bechtolsheim discloses a filter

including a second set of rules for receiving and further sorting the initially denied packets into

allowed packets and denied packets. See, e.g., Stubblebine Decl. Ex. A 612-621.

As an initial matter, because Bechtolsheim does not disclose initially denied packets (see

above), it necessarily follows that it does not disclose further sorting of initially denied packets.

Moreover, although PAN points to the priority encoder element of Bechtolsheim as

performing the further sorting, PAN does not argue that this element includes any separate

rules at all under PANs construction of rules. PAN instead only states perfunctorily that

Bechtolsheim anticipates under what it alleges is Junipers interpretation. D.I. 171 at 21. But

Juniper does not contend that the term rules needs construction as to the 347 patent, and PAN

does not articulate any such construction for rules allegedly advanced by Junipermuch less

explain why Bechtolsheims priority encoder includes a second set of rules under such a

construction. This falls far short of satisfying PANs burden to demonstrate anticipation of each



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and every claim element by clear and convincing evidence. Schumer , 308 F.3d at 1315-16;

Proveris , 536 F.3d at 1267-68.

Thus, PANs failure to identify any disclosure in Bechtolsheim of a filter including a

second set of rules for receiving and further sorting the initially denied packets into allowed

packets and denied packets provides an additional basis for denying PANs motion.

3. Bechtolsheim Does Not Disclose The Additional Elements of Claim 16

PAN has not satisfied its burden to show by clear and convincing evidence any disclosure

in Bechtolsheim of the additional element of dependent claim 16: further sorting the initially

allowed packets into allowed packets and packets requiring modification. In addition to the

deficiencies identified above in Sections III.D.1 and III.D.2 applicable to independent claim 14,

PAN wholly fails to address the additional elements of dependent claim 16 that PAN (much less

prove them by clear and convincing evidence).

Specifically, PAN does not even purport to identify any alleged disclosure in

Bechtolsheim of sorting initially allowed packets into allowed packets and packets requiring

modification. As discussed above, PAN does not cite to anything in Bechtolsheim that PAN

contends discloses initially allowed packets at all. PAN similarly fails to identify any

purported disclosure of sorting initially allowed packets into allowed packets and packets

requiring modification, as claim 16 requires. Instead, the section of PANs brief addressing

claim 16 refers only to routing the packets that have been allowed . Id .25

25 In the portion of its brief addressing claim 16, PAN refers to an alleged disclosure byBechtolsheim of initial determinations (allow, deny, or pass the packet for further

processing). D.I. 171 at 22. To the extent this could be construed as an argument byPAN that Bechtolsheim discloses initially allowed packets, it fails both because it was notincluded in any expert report or interrogatory response and thus is untimely ( see Fed. R.Civ. P. 26), and because it is factually incorrect. The passage from Bechtolsheim thatPAN cites (4:48-76) does not refer to any initial determination. To the contrary, itdiscusses the priority encoder. Bechtolsheim at 4:48-67. PAN itself admits that the



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Moreover, PAN does not identify any alleged sorting of any packets into allowed

packets and packets requiring modification. Instead, PANs only argument is that routing

an IP packet necessarily requires modifying the time-to-live value. D.I. 171 at 23

(emphasis added). In other words, PAN argues that every allowed packet requires

modificationnot that any packets are sorted as such.

Because PAN has not identified any disclosure in Bechtolsheim of further sorting

the initially allowed packets into allowed packets and packets requiring modification,

PANs motion should be denied. Additionally, because PAN has not even addressed

much less demonstrated by clear and convincing evidenceany alleged disclosure ofsorting of initially allowed packets into allowed packets and packets requiring modification,

Junipers cross-motion for summary judgment that Bechtolsheim does not anticipate the

347 patent should be granted. Proveris , 536 F.3d at 1267-68.

IV. OBJECTIONS TO THE MITCHELL DECLARATION

As discussed in detail above, the Mitchell Declaration upon which PAN relies so

heavily is an untimely disclosure of new testimony submitted long after the deadline for

expert discovery. See Section III.B.2, supra . The Mitchell Declaration is further

objectionable for a number of other reasons similar to those Juniper disclosed in its

objections to the improper Mitzenmacher Declaration that PAN filed with its Answering

Claim Construction Brief. See D.I. 165, 183. Like the Mitzenmacher Declaration, the

Mitchell Declaration includes impermissible legal opinions from an expert ( see, e.g. ,

priority encoders determination of allow, deny, or pass the packet for processing is a final determination. D.I. 171 at 22-23.



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Mitchell Decl. 86, 192) 26 and hearsay testimony regarding the patents and their

prosecution histories ( see, e.g. , Mitchell Decl. 68-88), many of which are erroneous,

incomplete, or misleading. Junipers objections thus track the grounds discussed in detail

in Junipers Objections to the Declaration of Dr. Michael Mitzenmacher (D.I. 183), which

Juniper incorporates by reference herein. 27

As for the new testimony of the Mitchell Declaration that PAN failed to timely

disclose in Dr. Mitchells expert reports, the improper material includes (without limitation)

the new sections of paragraphs 32-36, 55, 58, 60, 63 (fn. 16), 65, 67 (fn. 17), 86, 123, 137,

139, 142, 147, 148, 150, 191, 192, 204, 205, 207, and 208. These sections includesubstantive opinions that PAN relies on extensively for its summary judgment motion. For

example, as discussed in Section III.B.2, supra , Dr. Mitchells new testimony regarding the

Julkunen reference is at the center of PANs invalidity argument for the 612 patent. The

Mitchell Declaration also contradicts Dr. Mitchells prior testimony. See Section III.B.2,

supra (discussing Dr. Mitchells new interpretation of Julkunen Figure 3). Because the

time has long passed for PAN to disclose these opinions, the Mitchell Declaration should be

disregarded. INVISTA , 2013 WL 3216109, at *5; Stambler , 212 F.R.D. at 472.

V. CONCLUSION

The burden of proving invalidity on summary judgment is high, Schumer , 308 F.3d

at 1316, and PAN has failed to satisfy that burden here. Juniper respectfully requests that the

Court deny PANs motion for summary adjudication of anticipation and obviousness for the

26 Although Juniper provides exemplary citations to portions of the Mitchell declaration,Juniper objects to the entirety of Dr. Mitchells declaration.

27 To conserve the Courts time and resources, Juniper is submitting its objections in thiscross-motion and opposition brief and is not filing a separate brief as it did for itsobjections to the Mitzenmacher Declaration.



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612 and 347 patents, and grant summary judgment in favor of Juniper regarding: (1) no

anticipation of the 612 patent by Julkunen, (2) no obviousness of the 612 patent based on

Julkunen in combination with NAT, and (3) no anticipation of the 347 patent by

Bechtolsheim.

OF COUNSEL:

Morgan ChuJonathan S. KaganIRELL & MANELLA LLP1800 Avenue of the Stars, Suite 900

Los Angeles, CA 90067-4276(310) 277-1010

Lisa S. GlasserDavid C. McPhieRebecca L. CliffordIRELL & MANELLA LLP840 Newport Center Drive, Suite 400

Newport Beach, CA 92660(949) 760-0991

MORRIS , N ICHOLS , ARSHT & TUNNELL LLP

/s/ Jennifer YingJack B. Blumenfeld (#1014)Jennifer Ying (#5550)1201 North Market StreetP.O. Box 1347Wilmington, DE 19899-1347

(302) 658-9200 [email protected] [email protected]

Attorneys for Plaintiff Juniper Networks, Inc.

September 12, 20137558661.3



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CERTIFICATE OF SERVICE

I hereby certify that on September 19, 2013, I caused the foregoing to be

electronically filed with the Clerk of the Court using CM/ECF, which will send notification of

such filing to all registered participants.

I further certify that I caused copies of the foregoing document to be served on

September 19, 2013, upon the following in the manner indicated:

Philip A. Rovner, EsquireJonathan A. Choa, EsquirePOTTER A NDERSON & CORROON LLP1313 North Market Street

Hercules PlazaWilmington, DE 19801 Attorneys for Defendant

VIA ELECTRONIC MAIL

Daralyn J. Durie, EsquireRagesh K. Tangri, EsquireRyan M. Kent, EsquireBrian C. Howard, EsquireSonali D. Maitra, EsquireDURIE TANGRI LLP217 Leidesdorff StreetSan Francisco, CA 94111

Attorneys for Defendant

VIA ELECTRONIC MAIL

Harold J. McElhinny, EsquireMichael A. Jacobs, EsquireMatthew A. Chivvis, EsquireMatthew I. Kreeger, EsquireMORRISON & FOERSTER LLP425 Market StreetSan Francisco, CA 94105

Attorneys for Defendant

VIA ELECTRONIC MAIL

/s/ Jennifer Ying

Jennifer Ying (#5550)


Opposition to Invalidity SJM

Documents

Transcript of Opposition to Invalidity SJM