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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`SYMANTEC CORP.
`Petitioner,
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`v.
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`FINJAN, INC.,
`Patent Owner.
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`____________________
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`Case IPR2015-01892
`Patent 8,677,494
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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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`
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`I, S.H. Michael Kim, make the following declaration under penalty of
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`Case IPR2015-01892
`U.S. Patent No. 8,677,494
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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. 8,677,494 (“the ‘494 Patent) under inter partes review is Finjan
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`Inc. (“Finjan”), a wholly owned-subsidiary of Finjan Holdings, Inc. The ‘494
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`Patent issued on March 18, 2014.
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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.
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`4.
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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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`Finjan’s successful licensing program includes Microsoft, M86,
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`5.
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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 2017-2022.
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`6.
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`Finjan’s successful licensing program was bolstered with the issuance
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`of the ‘494 Patent on March 18, 2014 . Since the issuance of the ‘494 Patent,
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`Finjan has entered into five licenses.
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`7.
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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 ‘494 Patent and other Finjan patents. On November 15, 2015, a license
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`agreement was entered into with Avast in order to at least use, make, sell, offer to
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`sell, import or export the inventions of the Finjan patents, including the ‘494
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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 ‘494 Patent and other Finjan
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`patents.
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`8.
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`On March 18, 2014, Finjan asserted infringement of the ‘494 Patent
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`against Websense and that its products embodied inventions of the ‘494 Patent.
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`Finjan v. Websense, Inc., 14-CV-01353-BLF (N.D. Cal.) (that case was later
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`combined with another case asserting other patents 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 ‘494 Patent and other Finjan patents.
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`9.
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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 ‘494 Patent and
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`other Finjan patents.
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`10. The licensees of the ‘494 Patents are competitors in the computer
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`network security field with Finjan or Finjan’s licensees.
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`11. Attached to the Patent Owner’s Response are Exhibits 2015 and 2016,
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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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`12.
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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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`____________________________________________________________
`Print Name Signature
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`Date
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`S.H. Michael Kim
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`June 21, 2016
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