Declaration of Phil Hartstein- Reexam 90/013,016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`: Confirmation No.:
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`9521
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`Group Art Unit:
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`3992
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`Examiner:
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`Adam L. Basehoar
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`:Attorney Docket No.: FINREXM0005
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`Control Number: 90/013,016
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`Patent No.:
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`7,647,633
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`Inventors:
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`Edery et al.
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`Issued:
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`Title:
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`June 12, 2010
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`MALICIOUS MOBILE
`CODE RUNTIME
`MONITORING SYSTEM
`AND METIIODS
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`Mail Stop Ex Parte Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF PHJL HARSTEIN PURSUANT TO 37 C.F.R. § 1.132
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`Dear Sir:
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`T, Phil Hartstein, make the following declaration tmder penalty ofpetjury:
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`l. I make this Declaration based upon my own personal knowledge, infonnation, and belief,
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`and I would and could competently testify to the matters set forth herein if called upon to do
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`so.
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`2.
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`I am the current President of Fin jan Holdings, Inc. ("Finjan"). 1 have been President of
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`Finjan since Apri12013.
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`3. As part of my position as Fin jan's President 1 oversee the direction and management of
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`Finjan's assets, future investments, litigation, and licensing activity. This has required me to
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`study Finjan's history and to become acquainted with Finjan's technology.
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`1
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`Blue Coat Systems - Exhibit 1088
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`Declaration of Phil Hartstein- Reexam 90/013,016
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`4. Finjan has invested considerable time, et1ori and resources to secw·e it's invention with US
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`an Foreign patents. Finjan has invested over 65 million dollars in research and development
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`of its technology.
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`5. The total revenue to date for Finajan's licensing and enforcement activities of its patent
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`p01tfolio, including the '633 patent, is more than $145 million.
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`6. Finjan has consistently been praised for its pioneering technology. For example, IDC
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`reported that:
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`Finjan Software, the inventor of proactive content behavior inspection, protects
`organizations using its Next Generation of Vital Security Appliance Series of products
`that provide day-zero defense against new, previously unknown attacks by leveraging
`its proprietary application-level behavior blocking technology.
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`(Exhibit 1 at 55-56)
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`7. Finjas was the finalist in two ofSC Magazine' s 2007 Awards, Best Security Company and
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`Best Security Solution for Government - Fin jan Vital Security Web Appliance. (Exhibit 3).
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`Finjan was the winner of the Winner ofExcellence in Anti-Mal ware and Winner of
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`Excellence in Gatetways in the Info Secmity Products Guide- Product Excellence Awards
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`2007. (Exhibit 4). SC Magainze rated the Finjan Vital Security NG-61 00 5 out of 5 stars.
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`(Exhibit 5). PC Pro stated that the Finjan Vital Security NG-11 00 appliance "is one of the
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`best solutions available." (Exhibit 6). Finjan Vial Security Web Appliance was the winner
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`of e WEEK's Seventh Annual Excellence Award in the Network Datastrearn Protection
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`category. (Exhibit 7). Named in the top ten Most Interesting Products exhibited at RSA
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`2009 by eWEEK. (Exhibit 8). CRN.com review praised Finjan's Vital Security Web
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`appliance because "Finjan 's Vital Security can make a difference in organizations concerned
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`about security and compliance." (Exhibit 9) . SC Magaine gave the Finjan Vital Security
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`NG-8000 5 out of 5 starts. (Exhibit 10). SC Magazine commented that the Finjan Vital
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`Security Web Appliance Selies was " fjlust about the most comprehensive product of its kind
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`[they have] tested." (Exhibit 29).
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`Declaration of Phil Hartstein - Reexam 90/013,016
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`8. The '633 patent's teclmology itself received specific industry praise. An article by
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`InfonnationWeek described the Finjan Vital Security 6100 appliance as taking "signature
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`based protection to the next level by actually executing the code of the site you're visiting in
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`a sandbox in real time." (Exhibit 2).
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`9. In July 2005, Microsoft Corporation obtained a license to Finjan's computer security patents.
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`(Exhibit 12) (Exhibit 1 at 13). This included the application that was to become the '633
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`Patent. Microsoft obtained a license to Finjan's technology in order to advance their security
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`innovation just after entering the computer security market. At the time Microsoft obtained a
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`license to Finjan' s patents Microsoft had nearly no market share in the computer security
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`space and was heading to compete against large well established companies. (Exhibit 13).
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`Microsoft saw the value of licensing Finjan's technology to help give them a boost and now
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`Microsoft is one of the more dominant players with ·Microsoft Security Essentials product.
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`(Exhibit 14). A Microsoft spokesperson stated that "Finjan has done some interesting
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`product innovation in the security space." (Exhibit 12).
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`10. On June 6, 2005 Fin jan filed a complaint of infringement against SeclU'e Computing Corp.
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`("Secure Computing") asserting that Secure Computing infringed U.S. Patentc; No.
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`6,092,194, No. 6,804,780, and No. 7,058,822. (Exhibit 15 at 2). This case proceeded to a
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`jury trial where Secure Computing asserted that U.S. Patents No. 5,623,600 and No.
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`5,983,348 by inventor Shuang Ji ("Ji") were prior art to the Finjan Patents. (Exhibit 16 at 39).
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`The jury disagreed and found aJI the Finjan patents not invalid by the asserted prior art.
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`(Exhibit 17). Secure Computing was also found to infringe Finjan's patents, including their
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`sandboxing technology, and awarded damages on Secure Computing revenue of$65 .75
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`million. (Exhibit 17).
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`11. On August 18,2009 the district coutt in the Secure case enhanced Finjan's jury verdict. The
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`court bases its reasoning for enhancing damages partly on a finding that "finjan's patents
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`were copied deliberately" and "Fin jan patents represented a technology that [Secure] wished
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`to compete with and emulate in the market." (Exhibit 18 at 28). Secure Computing even
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`Declaration of Phil Hartstein- Reexam 90/013,016
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`named this copying i11 their code and called it "Finjan Buster" or "Finjan Killer." (Exhibit 19
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`at 7). Finjan was also awarded a permanent injunction against Secure Computing for
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`infringing Finjan 's sandboxing technology. (Exhibit 18 at 1)
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`12. In November 2009, Finjan licensed its patents to M86 Security
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`13. In March 2012, Finjan licensed its patents to Trustwave Security, Inc.
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`14. In April 2012, Finjan licensed its patents to Webroot Inc.
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`15. In November 2012, McAfee, Jnc./Intel Security ("fntel Security") took a license to Finjan's
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`patent portfolio. When Intel Security took the license to Finjan's patents, the permanent
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`injunction that had been levied against Secure Computing (which inte1 Security purchased in
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`2008) was dissolved. (sec Exhibit 18 for the permanent injunction against Secure Computing
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`which included Finjan's sandboxing technology).
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`16. Finjan had millions of dollars in sales with products that incorporated the '633 technology.
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`(Exhibit 20 at 20). Indeed, Finjan had sales of $6.5 million in 2001, $6.1 million in 2002,
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`$9.3 million in 2003,$12.9 million in 2004, $16.4 million in 2005, and $19.7 million in
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`2006. (Exhibit 21 at 11) (Exhibit 22 at 9) (Exhibit 23 at 15). During this time Finjan had
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`incorporated its patented sandboxing technology into its Vital Security product line. (Exhibit
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`24).
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`17. In total, Finjan has licensed its network and computer security patents to Microsoft, M86
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`Security, Trustwave, lntel Security and Webroot. Finjan had millions of dollars in sales of
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`the '633 technology. Finjan's competitor Secure Computing was found to have copied
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`Finjan's technology. Finjan' s enjoyed much industry praise for its sandboxing technology.
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`Declaration of Phil Hartstein - Reexam 90/013,016
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