Case 3:17-cv-05659-WHA Document 205 Filed 10/09/18 Page 1 of 4
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`PAUL 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
`AUSTIN MANES (State Bar No. 284065)
`amanes@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
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`Attorneys for Plaintiff
`FINJAN, INC.
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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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`Defendant.
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`Case No.: 3:17-cv-05659-WHA
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`PLAINTIFF FINJAN, INC.’S LETTER BRIEF
`IN OPPOSITION TO JUNIPER’S REQUEST
`TO AMEND THE PROTECTIVE ORDER
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`CASE NO. 3:17-CV-05659-WHA
`PLAINTIFF FINJAN, INC.’S LETTER BRIEF IN
`OPPOSITION TO JUNIPER’S REQUEST TO AMEND THE PROTECTIVE ORDER
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`Case 3:17-cv-05659-WHA Document 205 Filed 10/09/18 Page 2 of 4
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`Dear Judge Alsup:
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`Juniper’s request to amend the Stipulated Protective Order to allow confidential information
`produced in this case to be used in inter partes review (“IPR”) before the USPTO Patent and Trial
`Appeal Board (“PTAB”), including Finjan’s response to Interrogatory No. 3, violates legal authority
`and would harm Finjan and its third party licensees.
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`A. Juniper’s Request to Amend the Stipulated Protective Order Would Cause Serious Harm
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`Any information filed in an IPR, even under seal, has a high risk of public disclosure. “Under
`35 U.S.C. § 316(a)(1) [“Conduct of inter partes review”], the default rule is that all papers filed in an
`inter partes review are open and available for access by the public.” Garmin v. Cuozzo, IPR2012-
`00001, Paper 36; Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (accord,
`also noting the “strong public policy for making all information in an inter partes review open to the
`public”). This is especially true where the Patent Trial and Appeal Board (“PTAB”) refers to such
`information in its decisions. “There is an expectation that information will be made public where the
`existence of the information is referred to in a decision to grant or deny a request to institute a review
`or is identified in a final written decision following a trial.” Trial Practice Guide, 77 F.R. 48761 (Aug.
`2012). Even “information subject to a protective order may become public if identified in a final
`written decision” and a motion to expunge or keep that information under seal “will not necessarily
`prevail over the public interest in maintaining a complete and understandable file history.” Trial
`Practice Guide, 77 F.R. 48761 (Update Aug. 2018).
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`District courts and the PTAB all recognize this heightened risk of public disclosure of
`information filed in an IPR, even if filed under seal. “Compared to district courts, the PTAB has an
`intentionally narrower scope of discovery… Additionally, the PTAB has a corresponding narrower
`protection for the confidentiality of discoverable materials.” Ericsson Inc. v. D-Link Corp., No. 6:10-
`CV-473, 2013 WL 12171970, at *1 (E.D. Tex. Dec. 20, 2013). “[U]nlike in a civil action in district
`court… motions to seal in an inter partes review are made ‘at trial’; therefore, information will be
`sealed by [sic] only upon a showing of ‘good cause.’” Argentum Pharmaceuticals, supra, IPR2017-
`01053, Paper 27. Thus, Juniper’s offer to file Finjan’s confidential information under seal at the PTAB
`is a red herring because it offers significantly less protection than the Stipulated Protective Order
`entered by this Court and will not adequately protect Finjan’s interests or the interests of its third party
`licensees.
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`Further, Finjan and Juniper agreed to the Protective Order that restricts the use of confidential
`information produced in this case “only for prosecuting, defending, or attempting to settle this
`litigation” and expressly prohibits using it for “any purpose other than prosecuting this litigation.”
`Dkt. 149 at 1, 8. Finjan produced documents in reliance on this Protective Order. More significantly,
`Juniper stipulated to the protective order knowing it would likely petition for IPRs within the one-year
`filing deadline. Also, Juniper has no valid reason to amend it based on Finjan’s response to
`Interrogatory No. 3, as explained below. Multiple courts have denied similar requests to the one
`Juniper makes here and held that amending a stipulated protective order to allow documents produced
`in litigation to be used in IPR would be prejudicial and improper. See Ericsson, 2013 WL 12171970,
`at *2 (denying a nearly-identical request because “granting Ericsson relief from the Protective Order in
`this case would undermine the negotiations which produced the Protective Order. Ericsson… was in
`the best position to negotiate whether it may disclose documents discovered during litigation in an
`IPR.”); Polaris Indus. Inc. v. Arctic Cat Inc., No. CV 15-4475 (JRT/FLN), 2017 WL 5172319, at *2
`(D. Minn. Mar. 13, 2017) (accord, holding “under the clear language of the Amended Protective Order,
`any designated discovery obtained in the litigation before this Court shall be used only for purposes of
`this litigation. Polaris should employ the PTAB discovery procedures in order to seek the material in
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`Case 3:17-cv-05659-WHA Document 205 Filed 10/09/18 Page 3 of 4
`Hon. William Alsup
`October 9, 2018
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`defending its claims in the IPR.”). At least one other court has found that the use of confidential
`information, produced in litigation, in an IPR violated a protective order and may warrant sanctions.
`See Letter Order, Jazz Pharm., Inc. v. Amneal Pharm., LLC, No. 13-cv-00391-ES-JAD (N.J.D., Jan.
`22, 2016), ECF. No. 211. (threatening sanctions against a defendant for violating a Discovery
`Confidentiality Order by using confidential information produced in litigation to attempt to obtain
`discovery in IPR). Declaration of Austin Manes (“Manes Decl.”) at Exhibit A. Thus, Juniper’s
`proposed amendment to the Protective Order would subject Finjan and its third party licensees to
`serious harm from a high risk of public disclosure of their confidential information by the PTAB.
`Respectfully, the Court should follow the well-reasoned authority cited above and deny this motion.
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`B. Finjan’s Response to Interrogatory No. 3 is Confidential and Irrelevant to IPR
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`Juniper also has not shown that Finjan’s confidential response to Interrogatory No. 3 is
`necessary or relevant to its petitions for IPR. Finjan’s response to Interrogatory No. 3 contains
`confidential information regarding Finjan’s licensing practices and negotiations, which Finjan protects
`as confidential to its business. Manes Decl. at 1. The response also contains descriptions of Finjan’s
`actual licenses with third parties and a quote from many of these licenses, which Finjan is contractually
`obligated to keep confidential. Id. Disclosure of this information will harm Finjan’s business and
`future licensing negotiations, as well as the interests of third parties who are not involved in this action
`or in Juniper’s IPRs. Id.
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`Juniper’s motion rests on a single proposition: that whether Finjan’s licensees admitted
`infringement while accepting a license to the patents in suit is relevant to secondary considerations of
`nonobviousness. Dkt. 199 at 2. But Juniper cites no caselaw to support this position. Instead, Juniper
`relies only on Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. 2016) for the basic principle
`that a proponent of secondary considerations bears the burden of showing a nexus between the
`consideration and the patent. Apple is inapposite because it does not address: IPRs; amending
`stipulated protective orders; the filing of confidential information produced in district court litigation
`with the PTAB; or licenses of any kind. And Juniper cites no caselaw showing that an admission of
`liability by a licensee is required for the license to be a secondary consideration. Moreover, because it
`is not relevant, Finjan does not contest the fact that its licensees do not admit infringement and Finjan
`will not contest that fact in IPR. So, there is no reason for Juniper to file Finjan’s confidential
`interrogatory response with the PTAB just to prove this uncontested point.
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`Finally, the PTAB would also deny Juniper’s request for this information. Contrary to the
`discovery allowed under the F.R.C.P., discovery in an IPR is generally limited to (1) cross-examining
`declarants and (2) other limited information shown to be “in the interests of justice.” 35 U.S.C. §
`316(a)(5). Congress intended to limit discovery during IPR and the threshold for obtaining it is high.
`“[I]t is anticipated that, regardless of the standards imposed in section [316 or] 329, PTO will be
`conservative in its grants of discovery.” 154 Cong. Rec. S9989 (daily ed. Sept. 27, 2008) (statement of
`Sen. Kyl). As the court held in Ericsson: “Granting Ericsson’s request for relief from the Protective
`Order would allow Ericsson to circumvent this balance between IPR discovery and confidentiality. In
`essence, Ericsson would be able to use the Court’s broader Rule 26 ‘relevancy’ standard for discovery,
`yet subject Dell and Toshiba to the PTAB’s narrower protections of confidentiality.” Ericsson, 2013
`WL 12171970, at *1. Juniper cannot show good cause to amend the Protective Order in this case or
`that it would prevail on a similar motion to discover this information before the PTAB. See Polaris,
`2017 WL 5172319, at *2 (denying a similar motion and ordering the litigant to pursue the PTAB’s
`discovery procedures). This is especially true because Finjan produced plenty of public information
`regarding its licenses that Juniper can cite without compromising Finjan’s confidential interrogatory
`responses. For example, Finjan produced at least five years of SEC filings that discuss the public
`aspects of its licenses at FINJAN-JN 040339-041223 and maintains press releases disclosing the public
`aspects of it licenses on its website. And as stated above, Finjan will not contest the fact that its
`licensees do not admit infringement in IPR. Thus, Juniper has not shown good cause to amend the
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`Case 3:17-cv-05659-WHA Document 205 Filed 10/09/18 Page 4 of 4
`Hon. William Alsup
`October 9, 2018
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`Protective Order to use Finjan’s response to Interrogatory No. 3 in IPR, or that it is relevant or
`necessary to do so.
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`C. Juniper’s Motion Contradicts Its Discovery Positions
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`Juniper’s request to use Finjan’s confidential information in IPR contradicts the positions it
`maintains on its own discovery in this case. On September 19, 2018, Finjan’s Chief Intellectual
`Property Officer requested permission from Juniper to review the damages report prepared by Finjan’s
`expert, which contains Juniper’s confidential financial information, in order to further settlement
`discussions between the parties. This use (settlement) is permitted under the Protective Order but
`Juniper refused Finjan’s request.1 Dkt. 149 at 1, 8. Juniper should not be permitted to use the
`Protective Order as a sword and shield as it sees fit.2
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`D. At Minimum, Finjan Requests Additional Protection for Its Response to Interrogatory No. 3
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`If the Court remains inclined to allow such use, Finjan respectfully requests that the Court order
`Juniper to first obtain express assurance from the PTAB that Finjan’s response to Interrogatory No. 3
`will be filed under seal and will not be publicly disclosed. Finjan makes this request as a fair and
`consistent means to adequately protect its confidential business information and the promises it made
`to its licensees to keep the terms of their licenses confidential.
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`Sincerely,
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`/s/ Austin Manes_____
`Austin Manes
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`Attorney for Plaintiff Finjan, Inc.
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`1 Recently, Juniper has proposed some limited disclosure but has yet to explain what the limitations are
`or to disclose the requested information to Finjan.
`2 The parties have not met and conferred on the issues in this letter in person or by telephone. Contrary
`to Juniper’s statements, counsel for Finjan did not refuse to meet and confer. See Exhibit 2 to
`Juniper’s motion. Finjan responded to Juniper’s request within two days and explained that its counsel
`was in trial the following day (a Friday) but that Finjan’s counsel would be happy to meet and confer
`the following week. Id. at 2. Rather than meet and confer the following week, Juniper filed this
`motion.
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