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