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`I R E L L & M A N E L L A L L P
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
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`Hon. William Alsup
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`U.S. District Court, Northern District of California
`Finjan, Inc. v. Juniper Networks, Inc., Case No. 3:17-cv-05659-WHA
`Re:
`Dear Judge Alsup:
`The Protective Order in this case prohibits counsel with access to the other party’s
`confidential information from participating in patent prosecution activities that could “directly or
`indirectly” affect the scope of claims of any patent-in-suit (the “patent prosecution bar”). This
`provision comes directly from this district’s Interim Model Protective Order (“Model PO”).
`Contrary to Finjan’s argument, the instant dispute is not about meeting-and-conferring; instead, it is
`about Finjan’s desire to weaken the patent prosecution bar.
`A strong patent prosecution bar is important to Juniper because Finjan is essentially a non-
`practicing entity that, as it admits, has sued a dozen network security companies for patent
`infringement just in the Northern District of California in the past five years. See Declaration of
`James Hannah (“Hannah Decl.”) ¶ 4 (Dkt. No. 114-1). Finjan’s interests lie primarily in
`maximizing the value of its patents in litigation, as opposed to (for example) drafting patents to
`protect the unique or innovative features of its products. It is therefore critically important to
`Juniper that any Finjan representative who has had access to Juniper’s confidential information is
`prohibited from participating in patent prosecution activity that could impact claim scope.
`Finjan, in contrast, would love to have its attorneys with access to Juniper’s confidential
`information involved in patent prosecution activities, particularly the pending Inter Partes Review
`(“IPR”). It is well-settled law that arguments made by a patent owner during an IPR “affect the
`scope or maintenance of patent claims.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360
`(Fed. Cir. 2017) (extending the prosecution disclaimer doctrine to IPRs to “ensure that claims are
`not argued one way in order to maintain their patentability [during an IPR] and in a different way
`against accused infringers”). It would be in Finjan’s best financial interests to have attorneys with
`confidential knowledge of Juniper’s products making arguments in IPRs about the scope of those
`patents—knowing full well that those arguments become part of the prosecution history.
`The parties have already brought this dispute to the Court’s attention once. In a filing dated
`April 25, 2018, the parties presented their respective positions on the prosecution bar to the Court.
`See Dkt No. 74 at 14, n.6, n.7. In that filing, Juniper argued in favor of the strong prosecution bar in
`the Model PO, while Finjan argued for a watered-down bar that would have allowed its attorneys
`with access to Juniper’s confidential information to participate in IPRs. Id. After reviewing the
`joint submission, the Court expressly found “no good reason to deviate from the Interim Model
`Protective Order . . . and accordingly reject[ed] Finjan’s arguments to that effect.” Dkt. No. 83.1
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`1 The instant “motion to compel” is an improperly styled motion for reconsideration of this
`Court’s May 10, 2018 Order. Under Local Rule 7-9, a party must first seek leave from the Court to
`file a motion for reconsideration, and must, among other things, demonstrate that “a material
`difference in fact or law exists from that which was presented to the Court before entry of the
`interlocutory order for which reconsideration is sought” and is further prohibited from “repeat[ing]
`any oral or written argument made” previously (which was rejected by the Court). See Local Rule
`7-9(b)-(c). Here, Finjan seeks to bypass these requirements, and does not even attempt to show any
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`Case 3:17-cv-05659-WHA Document 117 Filed 06/26/18 Page 2 of 3
`I R E L L & M A N E L L A L L P
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
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`Finjan’s motion erroneously suggests that the dispute between Juniper and Finjan could
`simply be worked out if the parties would just meet-and-confer more. But Finjan acknowledges—
`as it must—that because the Court rejected its effort to weaken the prosecution bar, the only way it
`can weaken the bar now is by stipulation with Juniper. But Juniper has told Finjan—in meet-and-
`confers—that Juniper does not believe a weak prosecution bar is appropriate in this case, and that it
`sees no reason to deviate from the language this Court has already endorsed. This is not, as Finjan
`suggests, a semantic dispute over the precise language of the bar; it is Finjan’s attempt to overturn
`this Court’s prior order rejecting Finjan’s arguments in favor of a weak prosecution bar.
`I.
`Finjan Erroneously Interprets the Language of the Model Protective Order.
`Finjan also suggests that this Court should intervene because the language of the Model PO
`is ambiguous regarding Finjan’s counsel’s participation in IPRs. There is no such ambiguity. The
`plain language of the Model PO provides that “any individual who receives access to [confidential]
`information shall not be involved in the prosecution of patents or patent applications relating to the
`subject matter of this action.” See Model PO, § 8. The Model PO further describes “prosecution”
`as “directly or indirectly drafting, amending, advising, or otherwise affecting the scope or
`maintenance of patent claims,” and including “for example, original prosecution, reissue and
`reexamination proceedings.” Id. As discussed above, arguments made by a patent owner during an
`IPR “affect[s] the scope or maintenance of patent claims.” Aylus Networks, 856 F.3d at1360 (Fed.
`Cir. 2017). Indeed, Finjan was not able to explain during the meet and confer on May 30, 2018,
`how it would be possible for an individual defending a patent in an IPR to also not be “advising, or
`otherwise affecting the scope of patent claims.” See Declaration of Sharon Song (“Song Decl.”)
`¶ 4. Thus, under the express terms of the Model PO, Finjan’s counsel who received access to
`Juniper’s confidential information are barred from involvement in IPR proceedings relating to the
`asserted patents.
`Moreover, Finjan cannot in good faith assert that the Model PO does not bar IPRs because
`Finjan’s counsel cannot use Juniper’s confidential information to broaden Finjan’s claims through
`the IPR. In fact, Finjan can use Juniper’s confidential information obtained through this litigation to
`characterize or recast the meaning of certain claim terms during a related IPR in a way that benefits
`its arguments for patent infringement, especially where, as is the case here, the IPR proceeding is
`occurring at the same time as the litigation. The Model PO acknowledged this risk—that a claim
`term can be re-characterized in meaning to benefit a patentee even if the scope cannot be
`broadened—by expressly including ex parte reexaminations in its definition of “prosecution.” Ex
`parte reexaminations, which existed before the America Invents Act, are similar to IPRs in that a
`patentee cannot broaden its claims through either type of proceeding. The Model PO’s prosecution
`bar that includes ex parte reexaminations demonstrates that the risks associated with prosecution
`exist even when a proceeding does not allow a broadening of a patentee’s claims.
`II.
`Finjan Failed to Engage in a Meaningful Meet and Confer with Juniper after Violating
`the Model Protective Order, and Fails to Show Specific Harm and Prejudice Necessary
`to Modify the Model Protective Order.
`During the parties’ correspondence regarding the Model PO’s prosecution bar language,
`Juniper repeatedly asked Finjan, four separate times, to confirm that Kramer Levin has been
`complying with the currently governing Model PO by (1) confirming that no one who has had
`access to Juniper’s confidential information has participated in the IPR initiated by Cisco (IPR2018-
`00391) (“Cisco ’633 IPR”), which involves one of the patents asserted against Juniper, and
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`material difference in fact or law that exists between now and when it first presented its arguments
`for a weaker prosecution bar. Finjan also repeats in its letter brief all of the arguments it previously
`made (which the Court rejected). Compare Dkt. No. 74 at 14 n.7 with Dkt. No. 114. This violation
`of Local Rule 7-9(c) subjects Finjan to sanctions.
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`Case 3:17-cv-05659-WHA Document 117 Filed 06/26/18 Page 3 of 3
`I R E L L & M A N E L L A L L P
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
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`(2) describing what steps Kramer Levin has taken to ensure that no personnel who has had access to
`Juniper’s confidential information will participate in the Cisco ’633 IPR. Ex. 1 to Hannah Decl.
`Juniper emphasized that it was willing and ready to continue its conversations with Finjan about the
`prosecution bar (no matter how futile this seemed) once Finjan provided a substantive response to
`Juniper’s questions. Id. at 2. Finjan has never provided one. Ex. 1 to Hannah Decl.
`
`Juniper asked these questions of Finjan because it appears that Finjan has already violated
`the terms of the Model PO—and that this motion is Finjan’s attempt to show that the best defense is
`an aggressive (though not necessarily good) offense. For example, Finjan first received access to
`Juniper’s highly confidential source code on March 19, 2018. Finjan then filed its Patent Owner’s
`Preliminary Response in the Cisco ‘633 IPR on March 28, 2018, listing as its counsel the same
`attorneys who had access to Juniper’s confidential information. Indeed, even Finjan’s own letter
`brief, Dkt. No. 114, suggests that Finjan’s counsel, including Paul Andre, James Hannah, Michael
`Lee, and Jeff Price (all of whom have access to Juniper’s confidential information) have
`participated in the Cisco ’633 IPR. See id. at 1.
`
`As Finjan is aware, this Court has already ruled that there is “no good reason to deviate from
`the Interim Model Protective Order” and “reject[ed] Finjan’s arguments to that effect,” Dkt. No. 83,
`despite Finjan’s attempt to alter the language regarding the prosecution bar. See Dkt. No. 74 at 14
`n.6, n.7. Indeed, Finjan failed then and fails now to meet its “burden of showing the specific harm
`and prejudice that will result if [Finjan’s proposed modification regarding the prosecution bar] is
`not granted.” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2013 WL 5663434, at *1 (N.D. Cal.
`Oct. 17, 2017). Further, maintaining the Model PO’s default prosecution bar will not prejudice
`Finjan because Finjan already has separate counsel of record with the USPTO for all of the patents
`asserted in this matter (Bey & Cotropia PLLC), and Finjan has provided no explanation for why any
`post-grant proceedings related to the asserted patents cannot be handled by Finjan’s existing counsel
`of record who does not share office space with the same individuals that will be reviewing Juniper’s
`source code. See also Dkt. No. 74 at 14 n.6.
`
`Moreover, Finjan mistakenly relies on a non-existent concept of “law-firm” estoppel to
`assert that all Irell & Manella LLP’s (“I&M”) attorneys need to uphold the same, consistent legal
`positions for all its different clients. This legal concept does not exist, and the attorneys of a
`particular law firm are not limited by the actions of their colleagues. Each I&M client has different
`interests and different priorities that are taken into account by I&M attorneys when crafting a
`specific, case-by-case litigation strategy. In fact, Kramer Levin Naftalis & Frankel LLP, the law
`firm representing Finjan, has also taken different positions with regard to the prosecution bar for
`cases where it served as counsel for the defendants in a patent infringement case. See Ex. A; Song
`Decl. ¶ 3.
`
`Accordingly, Finjan’s motion to compel should be denied in its entirety because (1) Finjan
`was the one who failed to engage in a meaningful meet and confer with Juniper after violating the
`terms of the Model PO and (2) Finjan’s attempt to “clarify” the scope of the Model PO goes against
`the plain terms of the Model PO and is an improperly styled motion for reconsideration.
`
`Respectfully submitted,
`/s/ Jonathan S. Kagan________
`Jonathan S. Kagan
`IRELL & MANELLA LLP
`Attorneys for Juniper Networks, Inc.
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