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`Exhibit 5
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 2 of 26
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Otiice
`Addce'" COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia22313-1450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`115222
`7590
`08/29/2013
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond, VA 23229
`
`EXAMINER
`
`REVAK, CHRISTOPHER A
`
`ARTLNIT
`
`PAPER NUMBER
`
`2431
`
`DATE MAILI'D: 08/29/2013
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORl\nY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/290.708
`
`11107/2011
`
`Yigal Mordcchai Edcry
`
`FIN0001-CON1-CIP1-CON4
`
`4120
`
`TITLE OF INVENTION: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`APPLN.TYPE
`
`ENTfl'Y STAJ US
`
`JSSUE bEE DUE
`
`PUllLJCAl'lON FEE DUE PllliV. PAJD JSSUE FEE
`
`TOTAL bEE(S) DUE
`
`DAJ'EDUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1780
`
`$300
`
`$0
`
`$2080
`
`11/29/2013
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`IF AN ISSUE FEE HAS
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
`entity status still applies.
`If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
`lfthe ENTITY STATUS is changed from that shown above, on PART B- FEE(S) TRANSMITTAL, complete section number 5 titled
`"Change in Entity Status (from status indicated above)".
`For purposes of this notice, small entity fees are 112 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
`fees.
`
`II. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalent of Part B.
`
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev. 02/11)
`
`Page 1 of4
`
`FINJAN-JN 004348
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 3 of 26
`PART B- FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`(571)-273-2885
`
`or Fax
`
`INSTRUCTIONS: This form should be used for transnuttmg the ISSUE FEE and PUBLICATION FEE (if required). Blocks I through 5 should be completed where
`appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`indicated unless corrected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for
`maintenance fee notifications.
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block l for any change of address)
`
`115222
`7590
`08/29/2013
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond, VA 23229
`
`Note: A certificate of mailing can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`papers. Each additional paper, such as an assignment or formal drawing, must
`have its own certificate of mailing or transmission.
`
`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`States Postal Service with sufficient postage for first class mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being facsimile
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`
`(Depositor's name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORJ\EY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/290.708
`
`11107/2011
`
`Yigal Mordechai Edery
`
`FINOOOI-CONI-CIPI-CON4
`
`4120
`
`TITLE OF INVENTION: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`APPLN.TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1780
`
`$300
`
`$0
`
`$2080
`
`11/29/2013
`
`EXAMINER
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`REVAK, CHRISTOPHER A
`
`2431
`
`726-024000
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`0 Change of correspondence address (or Change of Correspondence
`Address form PTO/SB/122) attached.
`0 "Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Number is required.
`
`2. For printing on the patent front page, list
`(1) the names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) the name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name will be printed.
`
`2 ________________________ __
`
`3 ________________________ __
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent. If an assignee is identified below, the document has been filed for
`recordation as set forth in 37 CFR 3.11 Completion of this form is NOT a substitute for filing an assignment.
`(B) RESIDEJ\CE: (CITY and STATE OR COUNTRY)
`(A) NAME OF ASSIGNEE
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : 0 Individual 0 Corporation or other private group entity 0 Government
`
`4a. The following fee(s) are submitted:
`0 Issue Fee
`0 Publication Fee (No small entity discount permitted)
`0 Advance Order-# of Copies __________________ _
`
`4b. Payment ofFee(s): (Please first reapply any previously paid issue fee shown above)
`0 A check is enclosed.
`0 Payment by credit card. Form PT0-2038 is attached.
`0 The Director is hereby authorized to charge the required fee(s), any deficiency, or credit any
`overpayment, to Deposit Account Number
`(enclose an extra copy of this form).
`
`PTOL-85 (Rev. 02/11)
`
`Page 2 of4
`
`FINJAN-JN 004349
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 4 of 26
`
`5. Change in Entity Status (from status indicated above)
`0 Applicant certifying micro entity status. See 37 CFR 1.29
`0 Applicant asserting small entity status. See 37 CFR 1.27
`0 Applicant changing to regular undiscounted fcc status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see form PTO/SB/15A and 15B). issue
`fee payment in the micro entity amount will not be accepted at the risk of application abandonment.
`NOTE: If the application was previously under micro entity status, checking this box will be taken
`to be a notification ofloss of entitlement to micro entity status.
`NOTE: Checking this box will be taken to be a notification of loss of entitlement to small or micro
`entity status, as applicable.
`
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown by the records of the United States Patent and Trademark Office.
`
`Authorized Signature _______________________ _
`
`Date _____________________ _
`
`Typed or printed name _______________________ _
`
`Registration No. ________________ _
`
`This collection of information is required by 37 CFR 1.311. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process)
`an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering, preparing, and
`submitting the completed application form to the USPTO. Time will varv depending upon the individual case. Any comments on the amount of time you require to complete
`this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O.
`Box 1450, Alexandna, Virginia 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450,
`Alexandria, Virginia 22313-1450.
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`PTOL-85 (Rev. 02/11) Approved for use through 08/31/2013.
`
`OMB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 3 of 4
`
`FINJAN-JN 004350
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 5 of 26
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Otiice
`Addce'" COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORJ\EY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/290.708
`
`11107/2011
`
`Yigal Mordechai Edery
`
`FIN0001-CON1-CIP1-CON4
`
`4120
`
`115222
`7590
`08/29/2013
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond, VA 23229
`
`EXAMINER
`
`REVAK. CHRISTOPHER A
`
`ARTLNIT
`
`PAPER NUMBER
`
`2431
`
`DATE MAILED: 08/29/2013
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment to date is 0 day(s). If the issue fee is paid on the date that is three months after the
`mailing date of this notice and the patent issues on the Tuesday before the date that is 28 weeks (six and a half
`months) after the mailing date of this notice, the Patent Term Adjustment will be 0 day(s).
`
`If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information Retrieval
`(PAIR) WEB site (http://pair.uspto.gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of the Office of Patent Publication at 1-(888)-786-0101 or (571)-272-4200.
`
`PTOL-85 (Rev. 02/11)
`
`Page4 of4
`
`FINJAN-JN 004351
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 6 of 26
`
`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with
`your submission of the attached form related to a patent application or patent. Accordingly, pursuant to
`the requirements of the Act, please be advised that: (l) the general authority for the collection of this
`information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the
`principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process
`and/or examine your submission related to a patent application or patent. If you do not furnish the
`requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine
`your submission, which may result in termination of proceedings or abandonment of the application or
`expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the Freedom
`of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of
`records may be disclosed to the Department of Justice to determine whether disclosure of these
`records is required by the Freedom of Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting
`evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel
`in the course of settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress
`submitting a request involving an individual, to whom the record pertains, when the individual has
`requested assistance from the Member with respect to the subject matter of the record.
`4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency
`having need for the information in order to perform a contract. Recipients of information shall be
`required to comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5
`U.S.C. 552a(m).
`5. A record related to an International Application filed under the Patent Cooperation Treaty in this
`system of records may be disclosed, as a routine use, to the International Bureau of the World
`Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal agency for
`purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy
`Act (42 U.S.C. 218(c)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
`General Services, or his/her designee, during an inspection of records conducted by GSA as part of
`that agency's responsibility to recommend improvements in records management practices and
`programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance
`with the GSA regulations governing inspection of records for this purpose, and any other relevant
`(i.e., GSA or Commerce) directive. Such disclosure shall not be used to make determinations about
`individuals.
`8. A record from this system of records may be disclosed, as a routine use, to the public after either
`publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35
`U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CPR 1.14, as a
`routine use, to the public if the record was filed in an application which became abandoned or in
`which the proceedings were terminated and which application is referenced by either a published
`application, an application open to public inspection or an issued patent.
`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local
`law enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or
`regulation.
`
`FINJAN-JN 004352
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 7 of 26
`
`Notice of Allowability
`
`Application No.
`13/290,708
`Examiner
`CHRISTOPHER REVAK
`
`Applicant(s)
`EDERY ET AL.
`AlA (First Inventor to
`Art Unit
`File) Status
`2431
`No
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOW ABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. [8J This communication is responsive to the response tiled on 517113.
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on ___ .
`2. D An election was made by the applicant in response to a restriction requirement set forth during the interview on __ ;the restriction
`requirement and election have been incorporated into this action.
`
`3.[8J The allowed claim(s) is/are 1-18. As a result of the allowed claim(s), you may be eligible to benefit from the Patent Prosecution
`Highway program at a participating intellectual property office for the corresponding application. For more information, please see
`~;tqr//v.ww.usuto._gov/gatents/in!t events/.Qgh/indexjs.Q or send an inquiry to PPHfeedback@usgto.oov .
`4. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`*c) D None of the:
`a) D All
`b) D Some
`1. D Certified copies of the priority documents have been received.
`2. D Certified copies of the priority documents have been received in Application No. __ .
`3. D Copies of the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`*Certified copies not received: __ .
`
`Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`5. D CORRECTED DRAWINGS (as "replacement sheets") must be submitted.
`D including changes required by the attached Examiner's Amendment I Comment or in the Office action of
`Paper No./Mail Date __ .
`Identifying indicia such as the application number {see 37 CFR 1.84{c)) should be written on the drawings in the front {not the back) of
`each sheet. Replacement sheet{s) should be labeled as such in the header according to 37 CFR 1.121{d).
`6. 0 DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. D Notice of References Cited (PT0-892)
`2. [8J Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date See Continuation Sheet
`3. D Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`4. D Interview Summary (PT0-413),
`Paper No./Mail Date __ .
`
`/Christopher A. Revak/
`Primary Examiner, Art Unit 2431
`
`5. D Examiner's AmendmenUComment
`6. [8J Examiner's Statement of Reasons for Allowance
`
`7. [8J Other Examiner's Comments.
`
`U.S. Patent and Trademark Off1ce
`PTOL-37 (Rev. 08·13)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20130824
`
`FINJAN-JN 004353
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 8 of 26
`
`Continuation Sheet (PTOL-37)
`
`Application No. 13/290,708
`
`Continuation of Attachment(s) 2. Information Disclosure Statements (PTO/SB/08), Paper No./Mail Date: 5/7/13;5/7/13;5/7/13;5/7 /13;5/7/13.
`
`2
`
`FINJAN-JN 004354
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 9 of 26
`
`Application/Control Number: 13/290,708
`Art Unit: 2431
`
`Page 2
`
`NOTICE OF ALLOWANCE
`
`Continued Examination Under 37 CFR 1.114
`
`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 7,
`
`2013 has been entered.
`
`Response to Arguments
`
`2.
`
`The Declaration filed on May 7, 2013 under 37 CFR 1.131 (a) is sufficient to
`
`overcome the Ji, U.S. Patent 5,983,348 reference wherein the submitted Exhibit A
`
`Surfingate TM product press release titled "Gateway Level Corporate Security for the
`
`New World of Java™ and Downloadables" shows a publication date of October 31,
`
`1996 which is prior to September 10, 1997. The rejection is hereby withdrawn and the
`
`claims are in conditions for allowance.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statements (I OS) submitted are in compliance with the
`
`provisions of 37 CFR 1 .97. Accordingly, the information disclosure statement is being
`
`considered by the examiner.
`
`FINJAN-JN 004355
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 10 of 26
`
`Application/Control Number: 13/290,708
`Art Unit: 2431
`
`Page 3
`
`4.
`
`5.
`
`Allowable Subject Matter
`
`Claims 1-18 are allowed.
`
`The following is an examiner's statement of reasons for allowance:
`
`It was not found to be taught in the prior art of receiving an incoming
`
`Downloadable; deriving security profile data for the Downloadable, including a list of
`
`suspicious computer operations that may be attempted by the Downloadable, and
`
`storing the Downloadable security profile data in a database.
`
`Any comments considered necessary by applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should preferably
`
`accompany the issue fee. Such submissions should be clearly labeled "Comments on
`
`Statement of Reasons for Allowance."
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CHRISTOPHER REVAK whose telephone number is
`
`(571 )272-3794. The examiner can normally be reached on Monday-Thursday, 9:OOam-
`
`5:00pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Nathan Flynn can be reached on 517-272-1915. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`FINJAN-JN 004356
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 11 of 26
`
`Application/Control Number: 13/290,708
`Art Unit: 2431
`
`Page 4
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAl R only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/Christopher A. Revak/
`Primary Examiner, Art Unit 2431
`
`FINJAN-JN 004357
`
`
`
`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 12 of 26
`
`Attorney's Docket No.: F1N0001-CON1-CIP1-CON4
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Patent Application of:
`
`Yigal Mordechai Edery
`Nimrod Itzhak Vered
`David R. Kroll
`Shlomo Touboul
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`Application No: 13/290,708
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`METHOD AND SYSTEM FOR
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`PROTECTING A COMPUTER
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`AND A NETWORK FROM
`HOSTILE DOWNLOADA6LES )
`"~-------)
`Commissioner for Patents
`P. 0. Box 1450
`Alexandriar VA 22313-1450
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`Examiner: Christopher A. Revak
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`Art Unit:
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`2431
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`Filed:
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`November 7, 2011
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`For:
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`DECLARATION OF PRIOR INVENTION IN THE UNITED STATES TO
`OVERCOME CITED PATENT OR PUBLICATION (37 C.F.R. §131)
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`Sir:
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`My name is Shlomo Toubou!. I was employed by Finjan
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`Software, Ltd. of Netanya, Israel.
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`I am an inventor of the above identified patent
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`application which is assigned to Flnjan, Inc. I have reviewed the
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`application including the claims of the application.
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`The declaration made herein ls to establish that I had
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`the ldeas described in the patent application, and first developed a
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`working system that is described in the patent application and In claims 1,
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`3, 4-6, 9, 10 1 12-15 and 18 pending as of the signing of this declaration
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`Atty. Docket No. FIN0001~CON1-CIPl~CON4
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`~1-
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`FINJAN-JN 004421
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`
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`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 13 of 26
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`(hereafter sole invention) prior to September 10, 1997, which is the filing
`date of U.S. Patent No. 5,983,348 to Ji ("the '348 patent"). I hereby
`declare that my sole Invention was in my mind and developed by at !east
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`November 18, 1996. The remaining pending dependent claims were co(cid:173)
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`invented by or with one or more of the other listed inventors.
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`Below stated are activities of myself and Finjan
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`Software, ltd. regarding the date on which I developed my sole invention.
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`My sole rnvention was embodied in a Finjan Software,
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`Ltd. computer software product entitled SURFINGATE™, which was
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`released to the public before September 10, 1997 (but less than one year
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`before the filing date of the parent application, US Serial No. 08/964,388).
`SURFINGATE-r"'1 contained a fully functional implementation of the
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`technology described and claimed in the above identified patent
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`application.
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`Exhibit A attached herewith includes a press release and
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`product marketing materials explicitly establishing that SURFINGATET~1
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`performed my sole invention. All of the functionality shown in the
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`documents of Exhibit A was available in SURFINGATE™'s product which
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`was released before September 10, 1997. Hence, my sofe claimed
`invention was developed and released to the public before September 10,
`1997 by its incorporation into this product.
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`Additiona!!y, the '348 patent explicitly references the
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`SURFINGATE™ product and various claimed functionality thereof in
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`Column 2 as follows:
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`SufinGate is a server solution that is installed on an HTTP
`proxy server., ... If it detects that one or more insecure
`functions might be called during the execution of the applet, it
`blocks the applet. '" , SurfinGate maintains an applet profile
`database. Each applet is given an ID which is its URL. Once an
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`Atty. Docket No. FIN0001-CON.1-CIP1-CON4
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`-2-
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`FINJAN-JN 004422
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`
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`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 14 of 26
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`appiet is scanned( an entry is added to the database with its
`applet ID and the insecure functions it might try to access.
`When this applet is downloaded again, the security profile is
`taken from the database to determine the behavior of the
`applet. No analysis is redone.
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`Accordingly, since the '348 Patent references the
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`Surfingate product- which embodies my sole invention -this is further
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`evidence that the Surfingate product existed at the time the '348 Patent
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`was filed and that the sole invention was clearly developed and released
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`to the public prior to September 10, 1997, Which is the filing date of the
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`'348 Patent (Ji).
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`As the below-signed inventor, I, Shlomo Touboul, hereby
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`declare that all statements herein of my own knowledge are true and that
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`all statements made on information and belief are believed to be true; and
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`further that these statements are made knowing that willful false
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`statements and the like are punishable by fine or imprisonment, or both
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`under 1001 of Title 18 of United States Code, and such willful or false
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`statements may jeopardize the validity of the application or any patent
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`Issuing therefrom.
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`Very truly yours1
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`__.. .. ··· ·:si"g.natu re
`... ···
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`( .... ···
`Ful! Legal Name: Shlomo Touboul
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`Atty. Docket No. FIN0001-CON1-CIP1-CON4
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`-3-
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`FINJAN-JN 004423
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`
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`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 15 of 26
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`U'IIITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P 0 Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`13/290,708
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`11107/2011
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`Yiga1 Mordechai Edery
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`FIN0001-CON1-CIP1-CON4
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`4120
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`0110712013
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`74877
`7590
`King and Spalding LLP
`1700 Pennsylvania Ave, NW
`Suite 200
`Washington, DC 20006
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`EXAMINER
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`RbV AK, CHRIS' IOPHbR A
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`ARTU'IIT
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`PAPER NUMBER
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`2431
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01107/2013
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`dbey@KSLaw.com
`jpaolella-bald@kslaw.com
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`PTOL-90A (Rev. 04/07)
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`FINJAN-JN 004944
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`
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`Case 3:17-cv-05659-WHA Document 111-5 Filed 06/15/18 Page 16 of 26
`Application No.
`Applicant(s)
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`Office Action Summary
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`13/290,708
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`Examiner
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`EDERY ET AL.
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`Art Unit
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`2431
`CHRISTOPHER REVAK
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE .3. MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR t .136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1 )0 Responsive to communication(s) filed on __ .
`2a)[8] This action is FINAL.
`2b)0 This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ;the restriction requirement and election have been incorporated into this action.
`4)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C. D. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)1:8] Claim(s) 1-18 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)1:8] Claim(s) 1-18 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
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`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`htto:/iwww.uspto.aov/oatents/init events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.qov.
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`Application Papers
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`10)0 The specification is objected to by the Examiner.
`11 )1:8] The drawing(s) filed on 07 November 2011 is/are: a)[8] accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C