UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01979
`Patent 8,141,154
`
`__________________________________________________________
`
`DECLARATION OF S.H. MICHAEL KIM IN SUPPORT OF PATENT
`OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01979
`Patent 8,141,154
`
`__________________________________________________________
`
`DECLARATION OF S.H. MICHAEL KIM IN SUPPORT OF PATENT
`OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`I, S.H. Michael Kim, make the following declaration under penalty of
`
`Case IPR2015-01979
`U.S. Patent No. 8,141,154
`
`
`perjury:
`
`1.
`
`I make this Declaration based upon my own personal knowledge,
`
`information, belief, and I would and could competently testify to the matters set
`
`forth herein if called upon to do so.
`
`2.
`
`I am currently the Senior Director, Intellectual Property (IP) Counsel
`
`of Finjan Holdings, Inc. I have been IP counsel since March 2015. The assignee
`
`of U.S. Patent No. 8,141,154 (“the ‘154 Patent”) under inter partes review is
`
`Finjan Inc. (“Finjan”), a wholly owned-subsidiary of Finjan Holdings, Inc. The
`
`‘154 Patent issued on March 20, 2012.
`
`3.
`
`As part of my responsibilities, I oversee the enforcement, prosecution,
`
`and post-grant proceedings of patents assigned to Finjan in district courts and
`
`before the U.S. Patent & Trademark Office (“PTO”). I am familiar with Finjan’s
`
`licensing practices and also assist in the licensing of Finjan’s world-wide patent
`
`portfolio.
`
`4.
`
`Finjan was founded in 1997. It has invested over 65 million dollars in
`
`developing patented technology related to proactive content behavior inspection.
`
`Such investment contributed to Finjan being awarded 27 U.S. issued patents and
`
`27 issued foreign patents. To date, Finjan has licensed its technology in the
`
`industry receiving over $155 million dollars in royalty payments.
`
`
`
`1
`
`
`
`Finjan’s successful licensing program includes Microsoft, M86,
`
`Case IPR2015-01979
`U.S. Patent No. 8,141,154
`
`
`5.
`
`Trustwave, Intel/McAfee, Webroot, F-Secure, Websense, Inc. (“Websense”),
`
`Proofpoint, Inc. (“Proofpoint”), Armorize Technologies, Inc. (“Armorize”) and
`
`Avast Software (“Avast”). Several of the SEC filings that reflect some of these
`
`licenses are Patent Owner Exhibits 2020-2025.
`
`6.
`
`Finjan’s successful licensing program was bolstered with the issuance
`
`of the ‘154 Patent on March 20, 2012. Since the issuance of the ‘154 Patent,
`
`Finjan has entered into seven licenses.
`
`7.
`
`On December 7, 2012, Finjan and Intel settled a pending patent
`
`infringement litigation brought by Finjan againt McAfee which was newly
`
`acquired by Intel. The parties entered a license agreement under which Intel can at
`
`least use, make, sell, offer to sell, import or export the inventions of Finjan patents
`
`as of the effective date of the agreement, November 6, 2012. On July 30, 2012,
`
`Finjan and Webroot Inc. settled a pending patent infringement brought by Finjan
`
`against Webroot. The parties entered a license agreement under which Webroot
`
`can at least use, make, sell, offer to sell, import or export the inventions of Finjan
`
`patents as of the effective date of the agreement, July 30, 2012.
`
`8.
`
`On April 7, 2015, a license agreement was entered into with F-Secure
`
`in order to at least use, make, sell, offer to sell, import or export the inventions of
`
`the ‘154 Patent and other Finjan patents. On November 15, 2015, a license
`
`
`
`2
`
`
`
`agreement was entered into with Avast in order to at least use, make, sell, offer to
`
`Case IPR2015-01979
`U.S. Patent No. 8,141,154
`
`
`sell, import or export the inventions of the Finjan patents, including the ‘154
`
`Patent. On December 30, 2015, Finjan entered into another license agreement with
`
`a large network security computer company in order to at least use, make, sell,
`
`offer to sell, import or export the inventions to the ‘154 Patent and other Finjan
`
`patents.
`
`9.
`
`On September 23, 2013, Finjan asserted infringement of the ‘154
`
`Patent against Websense and that its products embodied inventions of the ‘154
`
`Patent. Finjan v. Websense, Inc., 13-CV-04398-BLF (N.D. Cal.) (that case was
`
`later combined with another case asserting another patent against Websense). On
`
`September 24, 2014, the parties settled and Websense entered into a license
`
`agreement in order to at least use, make, sell, offer to sell, import or export the
`
`inventions of the ‘154 Patent and other Finjan patents.
`
`10.
`
`In a different litigation (Finjan v. Proofpoint and Armorize, 13-CV-
`
`05805-HSG (N.D. Cal.)), Finjan settled with Proofpoint and Armorize. As part of
`
`the settlement, Proofpoint and Armorize entered into a license agreement to at least
`
`use, make, sell, offer to sell, import or export the inventions of the ‘154 Patent and
`
`other Finjan patents.
`
`11. The licensees of the ‘154 Patent are competitors in the computer
`
`network security field with Finjan or Finjan’s licensees.
`
`
`
`3
`
`
`
`Case IPR2015-01979
`U.S. Patent No. 8,141,154
`
`12. Attached to the Patent Owner’s Response are Exhibits 2026 and 2027,
`
`which are Gartner Magic Quandrant reports that show competitors within the
`
`computer network security field.
`
`13.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code, and that such willful false statements may jeopardize the validity of the
`
`patent and any inter partes decision issuing thereon.
`
`
`____________________________________________________________
`Print Name Signature
`
`
`
`Date
`
`
`S.H. Michael Kim
`
`
`
`
`
`
`July 12, 2016
`
`
`
`4
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