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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`Patent 8,141,154
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`__________________________________________________________
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`DECLARATION OF S.H. MICHAEL KIM IN SUPPORT OF PATENT
`OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
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`Patent Owner Finjan, Inc., Exhibit 2037, p. 1
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`
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`I, S.H. Michael Kim, make the following declaration under penalty of
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`Case IPR2016-00151
`U.S. Patent No. 8,141,154
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`perjury:
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`1.
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`I make this Declaration based upon my own personal knowledge,
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`information, belief, and I would and could competently testify to the matters set
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`forth herein if called upon to do so.
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`2.
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`I am currently the Senior Director, Intellectual Property (IP) Counsel
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`of Finjan Holdings, Inc. I have been IP counsel since March 2015. The assignee
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`of U.S. Patent No. 8,141,154 (“the ‘154 Patent”) under inter partes review is
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`Finjan Inc. (“Finjan”), a wholly owned-subsidiary of Finjan Holdings, Inc. The
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`‘154 Patent issued on March 20, 2012.
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`3.
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`As part of my responsibilities, I oversee the enforcement, prosecution,
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`and post-grant proceedings of patents assigned to Finjan in district courts and
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`before the U.S. Patent & Trademark Office (“PTO”). I am familiar with Finjan’s
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`licensing practices and also assist in the licensing of Finjan’s world-wide patent
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`portfolio and in ensuring that Finjan complies with any ongoing obligations under
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`its licenses.
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`4.
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`As part of my responsibilities, and in preparing for this Declaration, I
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`reviewed Finjan’s business records, maintained in the ordinary course of Finjan’s
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`regular business activities, including documentation of and relating to the
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`following:
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`
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`1
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`Patent Owner Finjan, Inc., Exhibit 2037, p. 2
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`
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`a. Finjan’s research and development efforts since its founding in 1997;
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`Case IPR2016-00151
`U.S. Patent No. 8,141,154
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`b. Finjan’s entire patent portfolio including its 27 U.S. issued patents and
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`27 foreign issued patents;
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`c. Finjan’s license agreements including the seven licenses that have
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`been entered into after the issuance of the ‘154 Patent; and
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`d. Finjan’s SEC filings (including those available at Exhibits 2020-2025)
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`which include information regarding Finjan’s successful licensing program
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`(discussed more herein); these filings were made at the time that they were filed
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`based on information from Finjan’s officers, were signed and confirmed by
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`Finjan’s officers, and are regularly made and maintained in the ordinary course of
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`Finjan’s regular business activities; and
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`e. Gartner Magic Quadrant reports (including those available at Exhibits
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`2026 and 2027) which show competitors within the computer network security
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`field.
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`5.
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`Finjan was founded in 1997. It has invested over 65 million dollars in
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`developing patented technology related to proactive content behavior inspection.
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`Such investment contributed to Finjan being awarded 27 U.S. issued patents and
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`27 issued foreign patents. To date, Finjan has licensed its technology in the
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`industry receiving over $155 million dollars in royalty payments.
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`
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`2
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`Patent Owner Finjan, Inc., Exhibit 2037, p. 3
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`Finjan’s successful licensing program includes Microsoft, M86,
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`Case IPR2016-00151
`U.S. Patent No. 8,141,154
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`6.
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`Trustwave, Intel/McAfee, Webroot, F-Secure, Websense, Inc. (“Websense”),
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`Proofpoint, Inc. (“Proofpoint”), Armorize Technologies, Inc. (“Armorize”) and
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`Avast Software (“Avast”). Several of the SEC filings that reflect some of these
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`licenses are Patent Owner Exhibits 2020-2025.
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`7.
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`Finjan’s successful licensing program was bolstered with the issuance
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`of the ‘154 Patent on March 20, 2012. Since the issuance of the ‘154 Patent,
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`Finjan has entered into seven licenses.
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`8.
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`On December 7, 2012, Finjan and Intel settled a pending patent
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`infringement litigation brought by Finjan againt McAfee which was newly
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`acquired by Intel. The parties entered a license agreement under which Intel can at
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`least use, make, sell, offer to sell, import or export the inventions of Finjan patents
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`as of the effective date of the agreement, November 6, 2012. On July 30, 2012,
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`Finjan and Webroot Inc. settled a pending patent infringement brought by Finjan
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`against Webroot. The parties entered a license agreement under which Webroot
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`can at least use, make, sell, offer to sell, import or export the inventions of Finjan
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`patents as of the effective date of the agreement, July 30, 2012.
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`9.
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`On April 7, 2015, a license agreement was entered into with F-Secure
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`in order to at least use, make, sell, offer to sell, import or export the inventions of
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`the ‘154 Patent and other Finjan patents. On November 15, 2015, a license
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`3
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`Patent Owner Finjan, Inc., Exhibit 2037, p. 4
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`
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`agreement was entered into with Avast in order to at least use, make, sell, offer to
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`Case IPR2016-00151
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`sell, import or export the inventions of the Finjan patents, including the ‘154
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`Patent. On December 30, 2015, Finjan entered into another license agreement with
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`a large network security computer company in order to at least use, make, sell,
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`offer to sell, import or export the inventions to the ‘154 Patent and other Finjan
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`patents.
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`10. On September 23, 2013, Finjan asserted infringement of the ‘154
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`Patent against Websense and that its products embodied inventions of the ‘154
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`Patent. Finjan v. Websense, Inc., 13-CV-04398-BLF (N.D. Cal.) (that case was
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`later combined with another case asserting another patent against Websense). On
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`September 24, 2014, the parties settled and Websense entered into a license
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`agreement in order to at least use, make, sell, offer to sell, import or export the
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`inventions of the ‘154 Patent and other Finjan patents.
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`11.
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`In a different litigation (Finjan v. Proofpoint and Armorize, 13-CV-
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`05805-HSG (N.D. Cal.)), Finjan settled with Proofpoint and Armorize. As part of
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`the settlement, Proofpoint and Armorize entered into a license agreement to at least
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`use, make, sell, offer to sell, import or export the inventions of the ‘154 Patent and
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`other Finjan patents.
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`12. The licensees of the ‘154 Patent are competitors in the computer
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`network security field with Finjan or Finjan’s licensees.
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`
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`4
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`Patent Owner Finjan, Inc., Exhibit 2037, p. 5
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`13. Attached to the Patent Owner’s Response are Exhibits 2026 and 2027,
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`which are Gartner Magic Quandrant reports that show competitors within the
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`computer network security field.
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`14.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code, and that such willful false statements may jeopardize the validity of the
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`patent and any inter partes decision issuing thereon.
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`
`
`
`S.H. Michael Kim
`Print Name Signature
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`
`
`
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`
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`August 31, 2016
`Date
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`5
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`Patent Owner Finjan, Inc., Exhibit 2037, p. 6