Case 3:17-cv-05659-WHA Document 114 Filed 06/22/18 Page 1 of 5
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`PAUL J. ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`v.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`
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`Defendant.
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`
`Case No.: 3:17-cv-05659-WHA
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`PLAINTIFF FINJAN, INC.’S LETTER
`BRIEF REGARDING MOTION TO
`COMPEL
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`Date:
`Time:
`Courtroom:
`Before:
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`July 5, 2018
`8:00 a.m.
`12, 19th Floor
`Hon. William H. Alsup
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`FINJAN, INC.’S LETTER BRIEF RE: MOTION TO COMPEL CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 114 Filed 06/22/18 Page 2 of 5
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`Plaintiff Finjan, Inc. (“Finjan”) moves to compel Juniper Networks, Inc. (“Juniper”) and its
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`counsel to comply with Local Rule 11-4 and engage in a meaningful meet and confer regarding the
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`parties’ Stipulated Protective Order, consistent with Juniper’s counsel’s other representations of
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`plaintiff-patentees. In the alternative, Finjan seeks an Order clarifying the scope of the Interim
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`Model Protective Order (“Model PO”) to permit Paul Andre (CA Bar 196585), James Hannah
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`(CA Bar 237978), Michael Lee (CA Bar 264592), and Jeff Price (NY Bar 5171350) (“Counsel”)
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`to participate in inter partes review (“IPR”) provided they will not draft or amend patent claims.
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`On May 10, 2018, the Court rejected the parties’ “stipulated” proposed protective order,
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`which contained competing provisions, finding “no good reason to deviate from the [Model PO]”
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`and instructed the parties to jointly agreed on a proposal. Dkt. No. 83. Since then, Finjan has
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`attempted to meet and confer by phone and email with Juniper to prepare a Stipulated Protective
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`Order. Declaration of James Hannah in Support of Finjan, Inc.’s Letter Brief Regarding Motion
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`to Compel (“Hannah Decl.”) filed herewith, ¶ 3. It has become apparent, however, that the
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`parties’ interpretations of the Model PO vary greatly. Finjan’s interpretation is consistent with the
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`Model PO’s plain language, which issued before the America Invents Act introduced IPRs and
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`was never amended to bar IPRs alongside other prosecution activities. Unlike prosecution, IPRs
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`only allow a patentee to narrow its claims. 35 U.S.C. §§ 305, 314; 37 C.F.R. § 1.530(j). Thus,
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`the prosecution bar should not apply to Finjan’s trial counsel because the PO does not address
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`IPRs, and the typical risk associated with prosecution does not apply when counsel cannot use
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`confidential information from litigation to broaden a patentee’s rights through PTO proceedings.
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`Contrary to the plain language of the Model PO, Juniper insists that counsel involved in
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`Cisco Systems, Inc. pending IPR against Finjan regarding the ‘633 Patent (IPR2018-00391) must
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`not have access to any of Juniper’s confidential information. To that end, Juniper has refused to
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`engage in any meaningful meet and confer regarding mutually acceptable language for a
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`Stipulated Protective Order. To overcome the impasse, Finjan proposed clarifying language that
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`prohibits litigation counsel who view confidential information to participate in IPRs if there are
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`any amendments to the claims during the proceedings. This language is consistent with District
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`precedent, all of this District’s Protective Orders in Finjan’s cases, and Orders that Juniper’s
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`FINJAN, INC.’S LETTER BRIEF RE: MOTION TO COMPEL CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 114 Filed 06/22/18 Page 3 of 5
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`counsel, Irell & Manella LLP, has agreed to in cases in which it represents plaintiff-patentees.
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`See, e.g., Grobler v. Apple Inc., No. C 12-01534 JST (PSG), 2013 WL 3359274, at *2 (N.D. Cal.
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`May 7, 2013)(holding that litigation counsel may participate in IPRs, but not draft or amend
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`claims); EPL Holdings, LLC v. Apple Inc., No. 12-cv-04306 JST (JSC), 2013 WL 2181584, at *4
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`(N.D. Cal. May 20, 2013)(same); Hannah Decl., ¶¶ 4-5.
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`Regardless, Juniper refused to dialogue about language addressing IPRs for the Stipulated
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`Protective Order, claiming that “it cannot think of any language” that would satisfy its concerns,
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`chiefly because it “did not think it was possible” for counsel to avoid adjusting the scope of
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`claims in IPR. Id.., ¶ 2, Ex. 1 at 4. Not only has this District held otherwise (see supra), but Irell
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`& Manella LLP has been both plaintiff and IPR counsel in at least 7 cases in the last 3 years—
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`none of which prohibited IPR participation, and at least 2 of which expressly allowed counsel to
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`make “submissions to and appearances at the [post-grant] proceeding, formulate reasons and
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`argue for patentability of such claim amendments”: (1) B/E Aerospace v. Zodiac Aerospace; (2)
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`Fraunhofer-Gesellschaft v. Sirius XM; (3) FISI v. LG; (4) FISI v. Samsung; (5) FISI v. ZTE; (6)
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`Immersion v. Apple.; (7) Kaist IP v. Samsung. Hannah Decl., ¶¶ 6-7, Exs. 2-3. When Finjan
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`alerted Juniper of its inconsistent position, it ignored Finjan’s request. Thus, Finjan is forced to bring
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`this issue to the Court’s attention, to require that Juniper’s counsel practice with appropriate decorum
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`and fairness when it finds itself on the other side of the table. N.D. Cal. L.R. 11-4.
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`To the extent the Court interprets the Model PO to preclude litigation counsel with access
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`to confidential information from participating in IPRs, good cause exists to modify it to allow
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`Finjan’s Counsel to participate. First, the modification is narrowly tailored to four attorneys that
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`view Juniper’s confidential information. Moreover, Finjan has already represented that Counsel
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`will not amend patent claims in IPRs. This concession alone should alleviate Juniper’s concerns:
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`“if the PTO and district court are just two fronts in the same battle, allowing a limited role for
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`litigation counsel while prohibiting counsel from crafting or amending claims is only reasonable.”
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`Grobler, 2013 WL 3359274, at *2. This District has routinely recognized that patentees such as
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`Finjan would suffer significant injury, and defendants like Juniper may profit from an unfair
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`advantage, if choice of counsel was restricted in IPR, causing additional cost and duplicative
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`FINJAN, INC.’S LETTER BRIEF RE: MOTION TO COMPEL CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 114 Filed 06/22/18 Page 4 of 5
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`preparation. Software Rights Archive, LLC v. Facebook, Inc., No. 5:12-cv-03970-RMW-PSG,
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`2014 WL 116366, at *3 (N.D. Cal. Jan. 13, 2014)(holding that litigation counsel may participate
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`in IPRs, as there is danger in permitting a party to “box-out” another party’s chosen counsel);
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`LifeScan Scotland, Ltd. v. Shasta Techs., LLC, No. 11-cv-04494-WHO, 2013 WL 5935005, at *5
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`(N.D. Cal. Nov. 4, 2013)(holding that an IPR ban causes unwarranted expense, and a limited role
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`is sufficient protection); Shared Memory Graphics, LLC v. Apple, Inc., No. C-10-2475 VRW
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`(EMC), 2010 WL 4704420, at * 4 (N.D. Cal. Nov. 12, 2010)(allowing participation in
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`reexamination proceedings with an affirmation of no misuse of confidential information). Finally,
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`good cause exists here because Finjan’s trial counsel is already participating in several IPRs that
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`do not involve Juniper.
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`Finally, there is no risk to Juniper if Finjan’s Counsel also participates in a limited role in
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`IPRs. Each of Finjan’s patents has been through several IPRs; the record has largely been set
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`prior to Juniper’s involvement. Also, Finjan has numerous litigations in this District; there is no
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`reason to believe that Finjan would somehow tailor its validity arguments to Juniper, and Finjan is
`statutorily prohibited from broadening its claims in IPR to cover any defendant’s accused product.
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`Further, it is presumed that counsel’s obligations of confidentiality are sufficient protection
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`against misuse. X One, Inc. v. Uber Techs., Inc., No. 16-cv-06050-LHK (SVK), 2017 WL
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`1020982, at *3-4 (N.D. Cal. Mar. 16, 2017) (holding that counsel’s confidentiality obligations
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`sufficiently protect against the risk of use of confidential information in IPRs); see also Grobler,
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`2013 WL 3359274, at *2 (“the risk of counsel ignoring its duties is inherent even under
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`[Juniper’s] proposed total ban, and in any event counsel is presumed to follow its obligations to
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`adhere to this court’s orders.”). Thus, good cause exists to allow a reasonably limited role for
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`Finjan’s Counsel in IPRs.
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`For these reasons, Finjan requests the Court to compel Juniper and its counsel to comply with
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`Local Rule 11-4 by participating in the drafting of a Stipulated Protective Order consistent with
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`Juniper’s counsel’s past representations, or alternatively, to order that Finjan’s litigation Counsel may
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`participate in IPR proceedings under the current PO so long as no amendments are made to the claims.
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`FINJAN, INC.’S LETTER BRIEF RE: MOTION TO COMPEL CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 114 Filed 06/22/18 Page 5 of 5
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`Dated: June 22, 2018
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`Respectfully submitted,
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`
`
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`By: /s/ James Hannah
`Paul J. Andre (SBN 196585)
`Lisa Kobialka (SBN 191404)
`James Hannah (SBN 237978)
`Kristopher Kastens (SBN 254797)
`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`kkastens@kramerlevin.com
`
`Counsel for Plaintiff
`FINJAN, INC.
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`FINJAN, INC.’S LETTER BRIEF RE: MOTION TO COMPEL CASE NO.: 3:17-cv-05659-WHA
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