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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.
`____________________
`
`Case IPR2016-00159
`U.S. Patent No. 8,677,494
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`__________________________________________________________
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`SUPPLEMENTAL DECLARATION OF S.H. MICHAEL KIM IN
`SUPPORT OF PATENT OWNER’S RESPONSE TO PETITION
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 1
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`I, S.H. Michael Kim, make the following declaration under penalty of
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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 provide this Declaration in connection with the above-identified
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`inter partes review proceeding.
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`3.
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`Attached to the Patent Owner Response as Exhibit 2012 is a true and
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`correct copy of my Declaration in Support of Patent Owner’s Response
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`(“Declaration I”).
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`4.
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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. 8,677,494 (“the ’494 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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`’494 Patent issued on March 18, 2014.
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`5.
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`As part of my responsibilities, and in connection with preparing
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`Declaration I, I reviewed Finjan’s business records, maintained in the ordinary
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`course of Finjan’s regular business activities, including documentation of and
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`relating to:
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`(a) Finjan’s research and development efforts since its founding in 1997;
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`1
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 2
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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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 licenses entered into after
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`the issuance of the ’494 Patent on March 18, 2014;
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`(d) Finjan’s SEC filings (including those available in Exhibits 2034–
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`2039) which include information regarding Finjan’s successful licensing program.
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`These SEC filings were made at the time that they were filed based on information
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`from Finjan’s officers, were signed and confirmed by Finjan’s officers, and are
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`regularly made and maintained in the ordinary course of Finjan’s regular business
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`activities; and
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`(e) Gartner Magic Quadrant Reports (including those available in
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`Exhibits 2040 and 2041) which show competitors within the computer network
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`security field. These documents are commonly used market reports that are
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`generally relied upon by the public and security community. Furthermore, these
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`documents are maintained in Finjan’s records in the ordinary course of Finjan’s
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`regular business activities.
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`6.
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` As part of my responsibilities, I attended the patent infringement trial
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`for Finjan v. Blue Coat Systems, Inc., 13-cv-03999-BLF (N.D. Cal.) in July 2015
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`and heard sworn testimony from various Finjan witnesses regarding Finjan’s
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`2
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 3
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`history, its research and development efforts, its patent portfolio, and its licensing
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`practices.
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`7.
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`Finjan’s successful licensing program with licensees includes
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`Microsoft, M86, Trustwave, Intel/McAfee, Webroot, F-Secure, Websense, Inc.
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`(“Websense”), Proofpoint, Inc. (“Proofpoint”), Armorize Technologies, Inc.
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`(“Armorize”) and Avast Software (“Avast”).
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`8.
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`As part of my responsibilities, and in connection with preparing
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`Declaration I, I reviewed documentation, maintained in Finjan’s records in the
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`ordinary course of Finjan’s regular business activities, relating to the patent
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`infringement litigation brought by Finjan against McAfee, which was acquired by
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`Intel during the litigation. My review included the license agreement,
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`
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`which settled the pending litigation.
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`This license agreement was made at the time that it was executed based on
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`information from Finjan’s officers; was signed by Finjan’s officers; is regularly
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`made as part of Finjan’s licensing activities; and is maintained in the ordinary
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`course of Finjan’s business. I also personally witnessed testimony concerning this
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`license agreement in the Finjan v. Blue Coat trial in the Northern District of
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`California. This testimony confirmed that the license agreement was authentic and
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`admissible as evidence.
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`3
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 4
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`9.
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`As part of my responsibilities, and in connection with preparing
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`Declaration I, I reviewed documentation, maintained in Finjan’s records in the
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`ordinary course of Finjan’s regular business activities, relating to the patent
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`infringement litigation brought by Finjan against Webroot. My review included
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`the license agreement, entered into by Finjan and Webroot on July 30, 2012, which
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`settled the pending litigation. This license agreement was made at the time that it
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`was executed based on information from Finjan’s officers; was signed by Finjan’s
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`officers; is regularly made as part of Finjan’s licensing activities; and is maintained
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`in the ordinary course of Finjan’s business. I also personally witnessed testimony
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`concerning this license agreement in the Finjan v. Blue Coat trial in the Northern
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`District of California. This testimony confirmed that the license agreement was
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`authentic and admissible as evidence.
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`10. As part of my responsibilities, and in connection with preparing
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`Declaration I, I reviewed documentation, maintained in Finjan’s records in the
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`ordinary course of Finjan’s regular business activities, relating to the license
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`agreement entered into by Finjan and F-Secure on April 7, 2015. I was also
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`involved in the negotiations of the agreement between Finjan and F-Secure in
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`2015. This license agreement was made at the time that it was executed based on
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`information from Finjan’s officers; was signed by Finjan’s officers; is regularly
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`4
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 5
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`made as part of Finjan’s licensing activities; and is maintained in the ordinary
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`course of Finjan’s business.
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`11. As part of my responsibilities, and in connection with preparing
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`Declaration I, I reviewed documentation, maintained in Finjan’s records in the
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`ordinary course of Finjan’s regular business activities, relating to the license
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`agreement entered into by Finjan and Avast on November 15, 2015. I was also
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`involved in the negotiations of the agreement between Finjan and Avast in 2015.
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`This license agreement was made at the time that it was executed based on
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`information from Finjan’s officers; was signed by Finjan’s officers; is regularly
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`made as part of Finjan’s licensing activities; and is maintained in the ordinary
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`course of Finjan’s business.
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`12. As part of my responsibilities, and in connection with preparing
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`Declaration I, I reviewed documentation, maintained in Finjan’s records in the
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`ordinary course of Finjan’s regular business activities, relating to the license
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`agreement entered into by Finjan and a large security computer company on
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`December 30, 2015. I was also involved in the negotiations of this agreement in
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`2015. This license agreement was made at the time that it was executed based on
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`information from Finjan’s officers; was signed by Finjan’s officers; is regularly
`
`made as part of Finjan’s licensing activities; and is maintained in the ordinary
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`course of Finjan’s business.
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`5
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 6
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`
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`13. As part of my responsibilities, and in connection with preparing
`
`Declaration I, I reviewed documentation, maintained in Finjan’s records in the
`
`ordinary course of Finjan’s regular business activities, relating to the patent
`
`infringement litigation brought by Finjan against Websense. My review included
`
`the license agreement, entered into by Finjan and Websense on September 24,
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`2014, which settled the pending litigation. This license agreement was made at the
`
`time that it was executed based on information from Finjan’s officers; was signed
`
`by Finjan’s officers; is regularly made as part of Finjan’s licensing activities; and is
`
`maintained in the ordinary course of Finjan’s business. I also personally witnessed
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`testimony concerning this license agreement in the Finjan v. Blue Coat trial in the
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`Northern District of California. This testimony confirmed that the license
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`agreement was authentic and admissible as evidence.
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`14. As part of my responsibilities, and in connection with preparing
`
`Declaration I, I reviewed documentation, maintained in Finjan’s records in the
`
`ordinary course of Finjan’s regular business activities, relating to the patent
`
`infringement litigation brought by Finjan against Proofpoint and Armorize. My
`
`review included the license agreement, entered into by Finjan and Proofpoint and
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`Armorize on June 3, 2016, which settled the pending litigation. I was also
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`involved in the negotiations of this agreement. This license agreement was made
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`at the time that it was executed based on information from Finjan’s officers; was
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`6
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 7
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`
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`signed by Finjan’s officers; is regularly made as part of Finjan’s licensing
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`activities; and is maintained in the ordinary course of Finjan’s business.
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`DECLARATION
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code, and that such willful
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`false statements may jeopardize the validity of the patent and any inter partes
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`decision issuing thereon.
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`S.H. Michael Kim
`Print Name
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`
`Signature
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`September 2, 2016
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`Date
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`7
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 8
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`
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`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Supplemental Declaration of S.H. Michael Kim in
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`Support of Patent Owner’s Response to Petition was served on September 2, 2016,
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`by delivering via electronic mail upon the following counsel of record for
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`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
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`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
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`Petitioner:
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`zPaloAltoNetworksIPR@cooley.com
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`8
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`Patent Owner Finjan, Inc. - Ex. 2048, p. 9
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