Case 3:17-cv-05659-WHA Document 212-1 Filed 10/25/18 Page 1 of 3
`
`
`
`8 4 0 N E W P O R T C E N T E R D R I V E , S U I T E 4 0 0
`N E W P O R T B E A C H , C A 9 2 6 6 0 - 6 3 2 4
`T E L E P H O N E ( 9 4 9 ) 7 6 0 - 0 9 9 1
`F A C S I M I L E ( 9 4 9 ) 7 6 0 - 5 2 0 0
`
`
`I R E L L & M A N E L L A L L P
`
`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
`
`1 8 0 0 A V E N U E O F T H E S T A R S , S U I T E 9 0 0
`
`L O S A N G E L E S , C A L I F O R N I A 9 0 0 6 7 - 4 2 76
`
`October 4, 2018
`
`T E L E P H O N E ( 3 1 0 ) 2 7 7 - 1 0 1 0
`F A C S I M I L E ( 3 1 0 ) 2 0 3 - 7 1 9 9
`W E B S I T E : w w w . i r e l l . c o m
`
`W R I T E R ' S D I R E C T
`
`T E L E P H O N E ( 3 1 0 ) 2 0 3 - 7 1 8 9
`
`
`
`
`
`Hon. William Alsup
`U.S. District Court, Northern District of California
`
`
`
`
`
`
`
`Re:
`
`
`Finjan, Inc. v. Juniper Networks, Inc., Case No. 3:17-cv-05659-WHA
`
`
`
`Dear Judge Alsup:
`Defendant Juniper Networks, Inc. (“Juniper”) respectfully submits this discovery letter brief
`requesting that the Court issue an Order amending the Stipulated Protective Order (see Dkt. No.
`149) to allow Juniper to use confidential information produced in this case in inter partes review
`(“IPR”) proceedings, so long as the information is sealed and protected in the same manner with the
`Patent Trial and Appeal Board. The confidential information Juniper seeks to use in the IPR
`proceedings is crucial to addressing any assertions by Plaintiff Finjan, Inc. (“Finjan”) regarding
`secondary considerations of non-obviousness that Finjan has raised in prior IPR proceedings.
`
`In multiple prior IPR proceedings involving other defendants, Finjan has argued that its
`licensing of certain patents serves as a secondary consideration of non-obviousness, and thus
`weighs against invalidating its patents. See, e.g., Cisco Sys., Inc. v. Finjan, Inc., IPR2018-00391
`(Paper 12) at 39-40 (Sept. 10, 2018) (“The commercial success of the patented inventions disclosed
`in the ‘633 Patent is evidenced through Finjan’s successful licensing program and the commercial
`success of the products covered under those licenses[.]”); ESET, LLC et al. v. Finjan, Inc.,
`IPR2017-01738 (Paper 31) at 55 (Aug. 21, 2018) (same). Moreover, Finjan has specifically faulted
`past petitioners for purportedly failing to address the licensing evidence that Finjan produced to
`those petitioners in the corresponding district court cases. For example, in its Patent Owner
`Response to an IPR brought by Cisco, Finjan argued:
`
`In the active litigation between Patent Owner and Petitioner, Patent
`Owner has provided Petitioner with substantial evidence related to
`secondary considerations of nonobviousness. Thus, there is simply
`no excuse for Petitioner’s failure to address this critical portion of
`the obviousness analysis.
`
`. . .
`
`The fact that Petitioner chose to ignore this evidence, skip this
`important component of the obviousness analysis, and provide the
`
`10588087
`
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 212-1 Filed 10/25/18 Page 2 of 3
`I R E L L & M A N E L L A L L P
`
`
`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
`
`
`
`Board with an incomplete obviousness analysis is basis alone for
`denying its obviousness arguments.
`See Cisco, IPR2018-00391 (Paper 12) at 38; see also ESET, IPR2017-01738 (Paper 31) at 54.
`
`On May 16, 2018, Finjan served Juniper with interrogatory responses on licensing and
`marking issues in this case that provide the evidence needed to fully rebut Finjan’s secondary
`considerations argument. Finjan designated its responses as “Highly Confidential – Attorneys’
`Eyes Only.”1 In those responses, Finjan asserted that none of its licensee products need to be
`marked because it is not aware of any licensee products that actually practice the patents-in-suit:
`
`Finjan is not aware of any products offered by Finjan’s licensees
`that require marking of Finjan’s patents. All of licensees that have
`entered into license and release agreements denied admission of
`liability when entering such agreements or did not agree that any of
`their products infringe the Patents-in-Suit. Further, these license
`and release agreements set forth typically in the preamble that the
`purpose of the agreements were “[t]o avoid the time and expense of
`litigation . . .”
`
`Ex. 1 at 5. These admissions refute any allegation that Finjan’s licenses evidence secondary
`considerations of non-obviousness because they show that there is no nexus between those licenses
`and the patents-in-suit. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1068 (Fed. Cir.
`2016), cert. denied, 138 S. Ct. 420, 199 L. Ed. 2d 311 (2017) (holding that the proponent of
`evidence of secondary considerations “bears the burden of showing that a nexus exists between the
`claimed features of the invention and the objective evidence offered to show non-obviousness.”)
`(internal citations omitted). The responses are thus highly relevant to the IPR proceedings and
`further address Finjan’s criticism of petitioners in prior IPR proceedings.
`
`Given that these interrogatory responses are highly relevant to the issue of secondary
`considerations, Juniper requested that Finjan agree to allow Juniper to use them as an exhibit in the
`IPR petitions Juniper was planning to file. Ex. 2 at 6. Juniper also offered to file them under seal in
`the IPR pursuant to a protective order that offers the same protections as the protective order in this
`litigation. Id. Finjan refused. Id. at 3-4. Despite Juniper’s repeated requests to schedule a meet
`and confer on this issue (both in writing and via voice message), Finjan refuses to respond to
`Juniper’s requests for Finjan to provide times that it is available for a teleconference. Id. at 1-4, 6.
`
`It is unreasonable for Finjan to block Juniper’s efforts to use discovery produced under the
`Stipulated Protective Order in this case in the IPR proceedings Juniper has initiated. Given that
`Juniper has agreed to maintain the same level of confidentiality in the IPR proceedings that are in
`
`
`1 Juniper has challenged Finjan’s designation as being improper under the terms of the
`Protective Order, as the responses do not contain “extremely sensitive ‘Confidential Information or
`Items,’ disclosure of which to another Party or Non-Party would create a substantial risk of serious
`harm that could not be avoided by less restrictive means.” See Dkt. No. 149 at 2 (Section 2.8).
`Further, the responses include “non-technical, purely financial or license information” that,
`according to the Protective Order, is not properly designated as “Highly Confidential – Attorneys’
`Eyes Only.” Id. As of the date of this letter, Finjan has refused to meet and confer with Juniper on
`this issue.
`
`10588087
`
`
`- 2 -
`
`

`

`Case 3:17-cv-05659-WHA Document 212-1 Filed 10/25/18 Page 3 of 3
`I R E L L & M A N E L L A L L P
`
`
`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
`
`
`
`place in this litigation, Finjan can suffer no prejudice (other than having its bogus arguments
`rejected by the PTAB, which Juniper contends is not legitimate prejudice). For these reasons,
`Juniper therefore seeks an order amending the Stipulated Protective Order in this case to allow
`Juniper to use Finjan’s confidential information in the IPR proceedings, as long as the information
`is sealed and protected. Juniper has attached a proposed amendment to the Stipulated Protective
`Order as Exhibit 3.
`
`
`Respectfully submitted,
`/s/ Jonathan S. Kagan________
`Jonathan S. Kagan
`IRELL & MANELLA LLP
`Attorneys for Juniper Networks, Inc.
`
`10588087
`
`
`- 3 -
`
`