`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2016-00159
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`SUPPLEMENTAL DECLARATION OF S.H. MICHAEL KIM IN
`SUPPORT OF PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 1
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`I, S.H. Michael Kim, make the following declaration under penalty of
`
`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 provide this Declaration in connection with the above-identified
`
`inter partes review proceeding.
`
`3.
`
`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
`
`(“Declaration I”).
`
`4.
`
`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. 8,677,494 (“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.
`
`5.
`
`As part of my responsibilities, and in connection with preparing
`
`Declaration I, I reviewed Finjan’s business records, maintained in the ordinary
`
`course of Finjan’s regular business activities, including documentation of and
`
`relating to:
`
`(a) Finjan’s research and development efforts since its founding in 1997;
`
`
`
`1
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 2
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`(b) Finjan’s entire patent portfolio including its 27 U.S. issued patents and
`
`27 foreign issued patents;
`
`(c) Finjan’s license agreements including the licenses entered into after
`
`the issuance of the ’494 Patent on March 18, 2014;
`
`(d) Finjan’s SEC filings (including those available in Exhibits 2034–
`
`2039) which include information regarding Finjan’s successful licensing program.
`
`These SEC filings were made at the time that they were filed based on information
`
`from Finjan’s officers, were signed and confirmed by Finjan’s officers, and are
`
`regularly made and maintained in the ordinary course of Finjan’s regular business
`
`activities; and
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`(e) Gartner Magic Quadrant Reports (including those available in
`
`Exhibits 2040 and 2041) which show competitors within the computer network
`
`security field. These documents are commonly used market reports that are
`
`generally relied upon by the public and security community. Furthermore, these
`
`documents are maintained in Finjan’s records in the ordinary course of Finjan’s
`
`regular business activities.
`
`6.
`
` As part of my responsibilities, I attended the patent infringement trial
`
`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
`
`
`
`2
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 3
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`history, its research and development efforts, its patent portfolio, and its licensing
`
`practices.
`
`7.
`
`Finjan’s successful licensing program with licensees includes
`
`Microsoft, M86, Trustwave, Intel/McAfee, Webroot, F-Secure, Websense, Inc.
`
`(“Websense”), Proofpoint, Inc. (“Proofpoint”), Armorize Technologies, Inc.
`
`(“Armorize”) and Avast Software (“Avast”).
`
`8.
`
`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 McAfee, which was acquired by
`
`Intel during the litigation. My review included the license agreement,
`
`
`
`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 testimony concerning this
`
`license agreement in the Finjan v. Blue Coat trial in the Northern District of
`
`California. This testimony confirmed that the license agreement was authentic and
`
`admissible as evidence.
`
`
`
`3
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 4
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`9.
`
`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 Webroot. My review included
`
`the license agreement, entered into by Finjan and Webroot on July 30, 2012, 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 testimony
`
`concerning this license agreement in the Finjan v. Blue Coat trial in the Northern
`
`District of California. This testimony confirmed that the license agreement was
`
`authentic and admissible as evidence.
`
`10. 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 license
`
`agreement entered into by Finjan and F-Secure on April 7, 2015. I was also
`
`involved in the negotiations of the agreement between Finjan and F-Secure in
`
`2015. 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
`
`
`
`4
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 5
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`made as part of Finjan’s licensing activities; and is maintained in the ordinary
`
`course of Finjan’s business.
`
`11. 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 license
`
`agreement entered into by Finjan and Avast on November 15, 2015. I was also
`
`involved in the negotiations of the agreement between Finjan and Avast in 2015.
`
`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.
`
`12. 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 license
`
`agreement entered into by Finjan and a large security computer company on
`
`December 30, 2015. I was also involved in the negotiations of this agreement in
`
`2015. 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.
`
`
`
`5
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 6
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`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,
`
`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
`
`testimony concerning this license agreement in the Finjan v. Blue Coat trial in the
`
`Northern District of California. This testimony confirmed that the license
`
`agreement was authentic and admissible as evidence.
`
`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
`
`Armorize on June 3, 2016, which settled the pending litigation. I was also
`
`involved in the negotiations of this agreement. This license agreement was made
`
`at the time that it was executed based on information from Finjan’s officers; was
`
`
`
`6
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 7
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`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.
`
`DECLARATION
`
`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.
`
`S.H. Michael Kim
`Print Name
`
`
`Signature
`
`
`
`
`
`
`
`
`
`
`September 2, 2016
`
`Date
`
`
`
`7
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 8
`
`
`
`Supplemental Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Supplemental Declaration of S.H. Michael Kim in
`
`Support of Patent Owner’s Response to Petition was served on September 2, 2016,
`
`by delivering via electronic mail upon the following counsel of record for
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`
`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
`
`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
`
`
`
`
`
`8
`
`Patent Owner Finjan, Inc. - Ex. 2048, p. 9
`
`
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