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 B2
`__________________________________________________________
`
`DECLARATION OF S.H. MICHAEL KIM IN SUPPORT OF PATENT
`OWNER’S RESPONSE
`
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 1
`
`
`
`__________________
`
`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 B2
`__________________________________________________________
`
`DECLARATION OF S.H. MICHAEL KIM IN SUPPORT OF PATENT
`OWNER’S RESPONSE
`
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 1
`
`
`
`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.
`
`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
`
`Finjan Inc. (“Finjan”), a wholly owned-subsidiary of Finjan Holdings, Inc. The
`
`’494 Patent issued on March 18, 2014.
`
`4.
`
`As part of my responsibilities, I oversee the enforcement, prosecution,
`
`and post-grant proceedings of patents assigned to Finjan in district courts and
`
`before the U.S. Patent & Trademark Office (“PTO”). I am familiar with Finjan’s
`
`licensing practices and also assist in the licensing of Finjan’s world-wide patent
`
`portfolio. I also ensure that Finjan complies with its ongoing license obligations.
`
`5.
`
`Finjan was founded in 1997. It has invested over $65 million dollars
`
`in developing patented technology related to proactive content behavior inspection.
`
`Such investment contributed to Finjan being awarded 27 U.S. issued patents and
`
`1
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 2
`
`
`
`Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`27 issued foreign patents. To date, Finjan has licensed its technology in the
`
`industry receiving over $155 million dollars in royalty payments.
`
`6.
`
`Finjan’s successful licensing program includes Microsoft, M86,
`
`Trustwave, Intel/McAfee, Webroot, F-Secure, Websense, Inc. (“Websense”),
`
`Proofpoint, Inc. (“Proofpoint”), Armorize Technologies, Inc. (“Armorize”) and
`
`Avast Software (“Avast”). Several of the SEC filings that reflect some of these
`
`licenses are Patent Owner Exhibits 2034-2039.
`
`7.
`
`Finjan’s successful licensing program was bolstered with the issuance
`
`of the ’494 Patent on July 17, 2012 . Since the issuance of the ’494 Patent, Finjan
`
`has entered into five licenses.
`
`8.
`
` On April 7, 2015, a license agreement was entered into with F-Secure
`
`in order to at least use, make, sell, offer to sell, import or export the inventions of
`
`the ‘494 Patent and other Finjan patents. On November 15, 2015, a license
`
`agreement was entered into with Avast in order to at least use, make, sell, offer to
`
`sell, import or export the inventions of the Finjan patents, including the ‘494
`
`Patent. On December 30, 2015, Finjan entered into another license agreement with
`
`a large network security computer company in order to at least use, make, sell,
`
`offer to sell, import or export the inventions to the ‘494 Patent and other Finjan
`
`patents.
`
`2
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 3
`
`
`
`Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`9.
`
`On March 18, 2014, Finjan asserted infringement of the ’494 Patent
`
`against Websense because its products embodied the inventions disclosed in the
`
`’494 Patent. Finjan v. Websense, Inc., 13-CV-04398-BLF (N.D. Cal.) (that case
`
`was later combined with another case asserting another patent against Websense).
`
`On September 24, 2014, the parties settled and Websense entered into a license
`
`agreement in order to at least use, make, sell, offer to sell, import or export the
`
`inventions of the ’494 Patent and other Finjan patents.
`
`10.
`
`In a different litigation (Finjan v. Proofpoint and Armorize, 13-CV-
`
`05805-HSG (N.D. Cal.)), Finjan asserted the ’494 Patent. Finjan settled with
`
`Proofpoint and Armorize. As part of the settlement, Proofpoint and Armorize
`
`entered into a license agreement to at least use, make, sell, offer to sell, import or
`
`export the inventions of the ’494 Patent and other Finjan patents.
`
`11. The licensees of the ’494 Patent are competitors in the computer
`
`network security field with Finjan or Finjan’s licensees.
`
`12. Attached to the Patent Owner’s Response are Exhibits 2040 and 2041,
`
`which are true and correct copies of Gartner Magic Quandrant reports that show
`
`competitors within the computer network security field. These documents are
`
`maintained in Finjan’s records in the ordinary course of Finjan’s regular business
`
`activities.
`
`3
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 4
`
`
`
`Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`13. Attached to the Patent Owner Response as Exhibit 2039 is a true and
`
`correct copy of Finjan Holdings, Inc. 8-K filed with the United States Securities
`
`and Exchange Commission, dated September 24, 2014. This document is publicly
`
`available. This document was drafted as part of Finjan’s regularly conducted
`
`business activities at the time it was created. It is used and relied upon as part of
`
`Finjan’s regular business activities, and is maintained in Finjan’s records in the
`
`ordinary course of its regular business activities.
`
`14. Attached to the Patent Owner Response as Exhibit 2034 is a true and
`
`correct copy of Finjan Holdings, Inc. 8-K filed with the United States Securities
`
`and Exchange Commission, dated April 7, 2015. This document is publicly
`
`available. This document was drafted as part of Finjan’s regularly conducted
`
`business activities at the time it was created. It is used and relied upon as part of
`
`Finjan’s regular business activities, and is maintained in Finjan’s records in the
`
`ordinary course of its regular business activities.
`
`15. Attached to the Patent Owner Response as Exhibit 2036 is a true and
`
`correct copy of Finjan Holdings, Inc. 8-K filed with the United States Securities
`
`and Exchange Commission, dated May 14, 2015. This document is publicly
`
`available. This document was drafted as part of Finjan’s regularly conducted
`
`business activities at the time it was created. It is used and relied upon as part of
`
`4
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 5
`
`
`
`Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Finjan’s regular business activities, and is maintained in Finjan’s records in the
`
`ordinary course of its regular business activities.
`
`16. Attached to the Patent Owner Response as Exhibit 2038 is a true and
`
`correct copy of Finjan Holdings, Inc. 8-K filed with the United States Securities
`
`and Exchange Commission, dated November 15, 2015. This document is publicly
`
`available. This document was drafted as part of Finjan’s regularly conducted
`
`business activities at the time it was created. It is used and relied upon as part of
`
`Finjan’s regular business activities, and is maintained in Finjan’s records in the
`
`ordinary course of its regular business activities.
`
`17. Attached to the Patent Owner Response as Exhibit 2035 is a true and
`
`correct copy of Finjan Holdings, Inc. 8-K filed with the United States Securities
`
`and Exchange Commission, dated December 30, 2015. This document is publicly
`
`available. This document was drafted as part of Finjan’s regularly conducted
`
`business activities at the time it was created. It is used and relied upon as part of
`
`Finjan’s regular business activities, and is maintained in Finjan’s records in the
`
`ordinary course of its regular business activities.
`
`18. Attached to the Patent Owner Response as Exhibit 2037 is a true and
`
`correct copy of Finjan Holdings, Inc. 8-K filed with the United States Securities
`
`and Exchange Commission, dated May 20, 2016. This document is publicly
`
`available. This document was drafted as part of Finjan’s regularly conducted
`
`5
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 6
`
`
`
`Declaration of S.H. Michael Kim
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`business activities at the time it was created. It is used and relied upon as part of
`
`Finjan’s regular business activities, and is maintained in Finjan’s records in the
`
`ordinary course of its regular business activities.
`
`19.
`
`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.
`
`
`
`Executed in East Palo Alto, California on August 12, 2016.
`
`August 12, 2016
`
`
`S.H. Michael Kim
`_________________________________________________________________
`Print Name Signature
`
`
`
`Date
`
`
`
`6
`
`Patent Owner Finjan, Inc. - Ex. 2012, p. 7
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