`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`U.S. Patent No. 8,141,154
`__________________________________________________________
`
`DECLARATION OF DR. MARC BERGER, Ph.D.
`
`PROTECTIVE ORDER MATERIAL
`
`Patent Owner Finjan, Inc. - Exhibit 2010, p. 1
`
`
`
`I, Marc Berger, declare as follows:
`
`
`I am over the age of majority and make this declaration of my own
`
`1.
`
`personal knowledge.
`
`2.
`
`I am a Managing Director at Soquel Group LLC, which maintains
`
`offices in Santa Cruz, California. I have been a registered patent agent since
`
`February 1999. Prior to founding Soquel Group LLC, I was Professor of
`
`Mathematics at Georgia Institute of Technology, Member of the US National
`
`Research Council (NRC) Panel for the Assessment of the National Institute of
`
`Standards and Technology (NIST), and Chief Scientist at Live Picture and MGI
`
`Software Corp.
`
`3.
`
`I earned a M.Sc. and a Ph.D. in Mathematics from Carnegie-Mellon
`
`University.
`
`4.
`
`Between 2003–2009, I was employed by Finjan Software, Ltd
`
`(“Finjan”). As an employee for Finjan, I provided patent prosecution services and
`
`worked with Eitan Law Group who helped file the final patent product in the
`
`United States and elsewhere. The type of services I would provide included
`
`assisting with drafting and prosecuting patent applications. One of my primary
`
`contacts was Yuval Ben-Itzhak, who was the CTO of Finjan. I maintained at least
`
`one physical file for each patent matter that I worked on while at Finjan.
`
`PROTECTIVE ORDER MATERIAL
`
`Patent Owner Finjan, Inc. - Exhibit 2010, p. 2
`
`
`
`5.
`
`Ex. 2007, submitted herewith, is a document that I located in my files.
`
`On October, 31, 2005, I received an email attaching a draft patent application from
`
`Mr. Ben-Itzhak. Ex. 2007 at 2. Mr. Ben-Itzhak and I corresponded about the draft
`
`patent application between October 31 and December 6, 2005. Id. at 1–2. I
`
`diligently worked on the draft patent application from the time I received the draft
`
`patent application from Mr. Ben-Itzhak until it was filed on December 12, 2005, as
`
`U.S. Patent Application Serial No. 11/298,475.
`
`6.
`
`At that time, Eitan Law Group represented Finjan, and I instructed
`
`Eitan Law Group to file U.S. Patent Application Serial No. 11/298,475. Ex. 2008
`
`at 4. I received confirmation from Eitan Law Group on December 18, 2005 that
`
`U.S. Patent Application Serial No. 11/298,475 was filed on December 12, 2005.
`
`Ex. 2008 at 1.
`
`7.
`
`As an employee of Finjan, I had a number of assignments that I was
`
`working on including my general administrative duties. For example, in the time
`
`period between October 31 and December 6, 2015, I was working on (i) an Office
`
`action response for U.S. Patent Application Serial No. 09/595,839, (ii) an Office
`
`action response for U.S. Patent Application Serial No. 09/730,326, (iii) an Office
`
`action response for European Patent Application No. 97 950 351.3, and (iv) an
`
`Office action response to Canadian Patent Application No. 2,275.771.
`
`
`
`- 3 -
`
`PROTECTIVE ORDER MATERIAL
`
`Patent Owner Finjan, Inc. - Exhibit 2010, p. 3
`
`
`
`8.
`
`In addition, I founded Soquel Group LLC in the summer of 2005 and
`
`had a full schedule working for several clients during November and December
`
`2005. In addition to my work for Finjan, I was engaged in other work, including
`
`drafting U.S. Patent Application Serial No. 11/321,840, in the time period between
`
`October 31 and December 6, 2005, when I began working on drafting the
`
`application that was filed as U.S. Patent Application Serial No. 11/298,475.
`
`
`
`
`
`
`
`- 4 -
`
`PROTECTIVE ORDER MATERIAL
`
`Patent Owner Finjan, Inc. - Exhibit 2010, p. 4
`
`
`
`PROTECTIVE ORDER MATERIAL
`
`Patent Owner Finjan, Inc. - Exhibit 2010, p. 5
`
`
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