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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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`May 22, 2019
`
`
`
`
`
`Honorable Thomas S. Hixson
`U.S. District Court Magistrate Judge
`
`
`Re:
`
`Finjan, Inc. v. Juniper Networks, Inc.,
`Case No. 3:17-cv-05659-WHA (N.D. Cal.)
`
`
`Dear Judge Hixson:
`
`The parties present this joint statement regarding defendant Juniper Networks, Inc.’s
`(“Juniper”) motion to compel production by non-party Dawn-Marie Bey, the patent attorney who
`prosecuted plaintiff Finjan, Inc.’s (“Finjan”) patents. See Dkt. 471. Counsel for Juniper and counsel
`for Ms. Bey, who is represented by the same counsel as Finjan, attest that they have met and conferred
`by telephone1 in good faith to resolve this dispute prior to filing this letter. See Ex. 3.
`
`
`Respectfully submitted,
`
` /s/ Joshua Glucoft____
`Joshua Glucoft
`IRELL & MANELLA LLP
`Attorneys for Defendant
`Juniper Networks, Inc.
`
`
`
` /s/ Kristopher Kastens_____
`Kristopher Kastens
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`Attorneys for Non-party
`Dawn-Marie Bey
`
`
`
`1 Counsel for Juniper is located outside of the Bay Area.
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`10683012
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`Case 3:17-cv-05659-WHA Document 484 Filed 05/22/19 Page 2 of 6
`I R E L L & M A N E L L A L L P
`
`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
`
`
`
`Juniper’s Position
`
`This is a high-stakes patent case where Finjan demanded $65M for just one of the multiple
`patents that Ms. Bey prosecuted on Finjan’s behalf. See Dkt. 228-7 at 2 (Finjan’s damages expert
`report). Juniper seeks documents that are highly probative of Juniper counterclaims that center on
`Ms. Bey’s improper gamesmanship in procuring patents for Finjan, including the patents asserted in
`this matter. Given the amount in controversy, the relative ease with which Ms. Bey can search for
`the documents compared to Juniper, and the importance of this information to Juniper’s case, Ms.
`Bey should be ordered to produce the requested documents in advance of her deposition.
`
`Background
`
`
`Under 37 C.F.R. § 1.78(d), patent applicants must promptly claim priority after an application
`is filed. The only exception is if the applicant “unintentionally” delayed claiming priority. See 37
`C.F.R. § 1.78(e). Because the exception is limited to cases of “unintentional” delays, it is rarely
`invoked—i.e., patent prosecutors are expected to timely comply with the rules, and they usually do.
`
`
`Ms. Bey, however, does not appear to play by the rules. Juniper’s Fifth Counterclaim for
`unclean hands alleges Ms. Bey has filed an unusually abundant number of petitions to accept an
`“unintentionally” delayed claim of priority. See Dkt. 218 at ¶¶ 232-58. Her gamesmanship
`encompasses Finjan patents asserted here, such as the ‘633 Patent (id. at ¶¶ 237-48), and Finjan
`patents not asserted here, such as the ‘822 Patent (id. at ¶¶ 249-56). Ms. Bey’s overarching pattern
`and practice of behavior—a modus operandi not limited to the specific patents asserted in this
`matter—is highly probative of whether Ms. Bey’s petitions are not actually “unintentional.” As the
`Court in this action aptly put the matter: “How many times does it take to ‘unintentionally’ delay
`claim to priority before one can reasonably infer an intentional pattern? … The totality of Juniper’s
`allegations presents a troubling scheme. Looking at the forest instead of the trees, we see a
`pattern….” Dkt. 190 at 11 (Alsup, J.) (emphasis in original).
`
`
`Critically, Ms. Bey was not the original prosecuting attorney of record on many of Finjan’s
`patents where she filed a petition to accept an “unintentionally” delayed claim of priority. Ms. Bey
`was therefore required to confirm with the prior attorneys of record that their failure to claim priority
`was indeed unintentional. See 37 C.F.R. § 11.18(b). Ms. Bey’s inability to show that she obtained
`such confirmation from the prior attorneys is highly probative as to whether her representations that
`the “entire delay” was “unintentional” were proper.
`
`RFP No. 2: “All invoices related to the Patents-in-Suit” (Ex. 1 at 4)
`
`Ms. Bey’s invoices to Finjan would likely serve as the best record of whether any
`communications between Ms. Bey and the prior attorneys of record about the delayed claims of
`priority ever occurred. While Ms. Bey may redact invoices to protect privileged legal advice, she
`must produce invoices sufficiently unredacted to show the threshold, non-privileged facts that are
`necessary to evaluate any claim of privilege, in particular the names, dates, and general subject matter
`of any communications about Finjan’s patents. See Finjan, Inc. v. ESET, LLC, et al., 2018 WL
`3126098, at *1 (S.D. Cal. June 6, 2018) (granting motion to compel Ms. Bey to produce billing
`records unredacted to show non-privileged background facts and circumstances about her work).
`
`Ms. Bey agreed to produce invoices only for work on the asserted patents but refuses to
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`10683012
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`Case 3:17-cv-05659-WHA Document 484 Filed 05/22/19 Page 3 of 6
`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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`produce invoices for work on Finjan’s other patents, objecting based on relevance.2 Ms. Bey’s
`relevance objection is wrong because, as Judge Alsup has recognized, Juniper’s counterclaim for
`unclean hands is directly supported by showing “the forest” instead of merely “the trees” including
`specifically with respect to Finjan patents that are not asserted in this matter. See, e.g., Ex. 5 (Dkt.
`218) at ¶¶ 249-56 (unclean hands counterclaim supported by the unasserted ‘822 Patent). As a
`compromise, Juniper proposes that Ms. Bey produce all invoices related to work analyzing priority
`or inventorship for Finjan’s patents, redacted to protect any privileged legal advice.
`
`RFP No. 3: “All petitions to accept unintentionally delayed claim of priority filed by you or bearing
`your signature that were submitted to or filed with the USPTO.” (Ex. 1 at 4)
`
`Juniper requested all of Ms. Bey’s petitions to accept “unintentionally” delayed claims of
`priority because they are critical to understanding whether Ms. Bey’s pattern of behavior is unique to
`her relationship with Finjan, or whether it is a common part of her practice for other clients.
`
`Ms. Bey’s primary objection is the alleged burden from searching for petitions filed on behalf
`of non-Finjan clients. But Ms. Bey’s unspecified search methodology that purportedly yielded 4,500
`hits appears to be a self-serving attempt to conjure up more burden than necessary. Juniper seeks
`only publicly filed petitions,3 and it is hard to imagine that a focused search would generate so many
`hits. As a compromise, Juniper offers to provide Ms. Bey with targeted search terms that should yield
`no more than 1,000 hits (if that many) to review for production before Ms. Bey’s May 30 deposition.
`
`That these filings are “public” is irrelevant because they cannot be readily located by Juniper.
`Juniper’s counsel is not aware of any systematic way to identify all the patent applications that Ms.
`Bey has worked on and search them for delayed priority petitions. Moreover, the RFP seeks petitions
`that Ms. Bey filed but that do not bear her signature (for example because they were signed by her
`partner at her law firm Bey & Cotropia PLLC), and Juniper cannot identify any such petitions.
`
`RFP Nos. 12-22: All communications with prior attorneys of record (Ex. 1 at 5)
`
`
`Juniper requested communications between Ms. Bey and the prior attorneys of record who
`prosecuted Finjan’s patents so Juniper can determine whether Ms. Bey had any communications
`regarding the prior attorneys’ failure to claim priority. Ms. Bey originally offered only
`communications concerning the asserted patents. See Ex. 2 at, e.g., 14. Ms. Bey now offers to include
`communications related to family members of the asserted patents, but this offer still hides her actions
`with respect to other Finjan patents that are not within the same family. Juniper must be able to see
`overarching pattern (“the forest”) of Ms. Bey’s prosecution improprieties on behalf of Finjan
`generally, so as a compromise, Juniper proposes that Ms. Bey produce (or log) all communications
`with prior attorneys related to the analysis of claims of priority or inventorship of any Finjan patent.
`
`Subject Matter Descriptions on Privilege and Redaction Logs
`
`
`2 Invoices for work covering Finjan’s unasserted patents are within the scope of Juniper’s request that
`asks for invoices “related to” the asserted patents, where “related” is broadly defined. See Ex. 1 at
`Definitions ¶ 2. Juniper also requested all documents related to Finjan (RFP No. 27), which
`encompasses invoices for unasserted Finjan patents. See Ex. 1. See also Ex. 3 at 2 (confer email).
`3 A request for public filed petitions does not call for privileged material or require notifying third
`parties.
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`10683012
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`Case 3:17-cv-05659-WHA Document 484 Filed 05/22/19 Page 4 of 6
`I R E L L & M A N E L L A L L P
`
`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
`
`
`
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`Ms. Bey produced three different privilege and redaction logs.4 See Exs. 4, 5, 6. The subject
`
`matter descriptions are wholly general, e.g., “Email regarding ex parte reexamination of U.S. Patent
`No. 8,079,086.” See Ex. 4 at 4. This does not satisfy Judge Alsup’s requirement that logs “be
`sufficiently detailed and informative to justify the privilege.” See Supplemental Order To Order
`Setting Initial Case Management Conference at ¶ 24. Critically, not a single entry in the subject
`matter column references priority. Ms. Bey and Finjan cannot refuse to disclose during discovery
`whether she discussed priority with the prior attorneys of record, and then suggest at trial that she did
`have such communications. As a compromise, Juniper proposes that Ms. Bey specify which entries
`relate to discussions concerning claims of priority or inventorship (if any), with whom, and when.
`
`RFP Nos. 5, 6, 8-11: All documents related to the conception or reduction to practice of the
`Patents-in-Suit, including communications with the inventors (Ex. 1 at 4)
`
`
`As set forth in Juniper’s Third Counterclaim (Dkt. 218 at ¶¶ 193-212), Ms. Bey also facilitated
`inequitable conduct by submitting to the USPTO a false declaration from Mr. Shlomo Touboul
`claiming that he solely conceived of certain claims of the asserted ‘494 Patent. Ms. Bey’s
`nonprivileged documents related to the conception of the claimed invention, including her
`communications with Mr. Touboul and the other inventors originally listed on the patent, are highly
`probative of whether Mr. Touboul’s declaration was false. As a compromise, Juniper proposes that
`Ms. Bey produce (or log) all communications with the inventors regarding the priority date of any
`Finjan patent or inventorship of the ‘494 Patent.
`
`Ms. Bey’s Position
`
`The Court should deny Defendant Juniper Network, Inc.’s (“Juniper”) request to compel
`additional discovery from Third-Party Dawn-Marie Bey. Anything relevant has already been
`produced and now Juniper seeks irrelevant documents that are unduly burdensome for Ms. Bey to
`collect and process. Juniper’s document subpoena on Ms. Bey has 27 different broad individual
`requests, including requests for every single document “related to Finjan” and, separately, for “all
`communications” with 16 separate people or entities, not limited to whether any such communications
`related to Finjan or its patents. Ex. A. Juniper has not agreed to narrow these requests and now seeks
`to compel her to search 20 years’ worth of patent prosecution files, which amounts to sifting through
`thousands of client files.
`Juniper’s Request for Petitions to Correct Priority for Her Other Clients (Request 3)
`
`Juniper’s request for Ms. Bey to search for and produce every petition to correct priority that
`Ms. Bey has ever filed for her other clients is overly burdensome and irrelevant to any issue in the
`case. Ex. A, Request 3 (“[a]ll petitions to accept unintentionally delayed claim of priority filed by
`you or bearing Your signature that were submitted to or field with the USPTO.”). As a compromise
`position, Ms. Bey has already searched for, collected, and produced the petitions to correct priority
`that she has filed for Finjan, regardless if it was for one of the Patents-in-Suit, and this is already
`beyond what is relevant to the case. The Court should not enforce Juniper’s overreaching request and
`subject Ms. Bey to further burden of searching 20 years of prosecution files for hundreds of unrelated
`clients for material that Juniper can locate by searching a public database. See Fed. R. Civ. Proc.
`45(d)(3)(A)(iv) (courts must modify a subpoena that “subjects a person to undue burden”). Her
`records include nearly ten thousand individual prosecution files and confidential and privileged
`
`4 Juniper was told by opposing counsel that these logs are for documents in Ms. Bey’s possession.
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`10683012
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`Case 3:17-cv-05659-WHA Document 484 Filed 05/22/19 Page 5 of 6
`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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`information for many third parties that have nothing to do with this litigation. Ms. Bey performed a
`preliminary search for these petitions in her current electronic records, which returned over 4,500
`documents that could be related to these petitions based on the word search from just 2013 through
`the present. In addition to these 4,500 documents, Ms. Bey has an additional 200 boxes of archived
`files that would require manual searching for clients predating 2013.
`Even for those files that are electronically searchable, Ms. Bey would be required to go
`through each document individually and determine (1) if the hit was for a petition to correct priority,
`(2) that petition was actually filed with the USPTO, and (3) if the petition was not filed, whether there
`was any privileged information for her other clients included in the material. Ms. Bey would also
`need to then check if that particular the petition is public, as the file history of pending applications
`are not public until they are published. Therefore, Ms. Bey cannot produce these petitions without
`notifying that unrelated third party, who will likely be more than a little upset that their unrelated,
`irrelevant confidential information was being sought for in the first place in litigation that is unrelated
`to the prosecution of their patents.
`Further, the majority of the file histories are publicly available that Juniper can just as easily
`search for. Despite Juniper’s claim to the contrary, a party can search for patents by the attorney that
`prosecuted them. The USPTO has a free search tool that Juniper can use to determine the patents that
`she has prosecuted. Certainly a subpoena on a third party prosecutor seeking documents unrelated to
`the parties to the case should not extend to requiring the third party to search records that are just as
`accessible to Juniper. In addition, there are numerous search tools that are commonly used that
`include robust search capabilities for patents by prosecuting attorney. Juniper’s claim it does not
`understand how to accomplish such a search ring hollow, as Finjan identified these tools to Juniper.
`See supra at 2. Moreover, Juniper failed to articulate a concrete burden for obtaining this information.
`Ms. Bey has described in detail the steps that would be required of her to review 4,500 documents
`plus 200 boxes of manual files. At a minimum, because the public records available to Juniper do
`not require any analysis for privilege, it is significantly less burdensome for Juniper to collect this
`information itself than for Ms. Bey, who is a third party, and to the extent Juniper wants to ask
`questions about those public filings, it can do so during her deposition.
`This material is simply not relevant or proportional to the needs of the case. Juniper claims
`that it wants to show that these petitions are somehow unusual. It offers no evidence that such
`petitions are unusual, and indeed, its statements that other attorneys rarely use this type of petition are
`strange, given that Juniper has claimed there is no way to determine this information from public
`records. See supra at 2. However, if that is what it wants, it can derive this information using publicly
`available USPTO records or subpoena the USPTO for statistical information. Juniper’s inequitable
`conduct claims should not be used to seek unfettered access to the records of Ms. Bey’s other clients,
`which have no bearing on the appropriateness of the specific petitions that Juniper has placed at issue
`in this litigation. See Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1288 (Fed. Cir.
`2011) (inequitable conduct claims have troubling side effects, including attempts to expand discovery,
`detract from the merits of the case, and increase the complexity and cost of litigation).
`Juniper’s Request for Invoices for Patents that are not in Suit
`
`Ms. Bey’s compromise position regarding her invoices is to provide invoices for the Patents-
`in-Suit in this case, even though they are not relevant. See Masimo Corp. v. Shenzhen Mindray Bio-
`Med. Elecs. Co., 2015 WL 12912331, at *2 (C.D. Cal. Apr. 17, 2015) (denying motion to compel fee
`arrangements and financial interests of prosecution counsel as irrelevant to inequitable conduct claims
`following the Therasense heightened burden of proof for such claims); see also In Re: Method of
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`Case 3:17-cv-05659-WHA Document 484 Filed 05/22/19 Page 6 of 6
`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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`Processing Ethanol Byproducts and Related Subsystems (‘858) Patent Infringement, Master Case No.
`1:10-ml-2181-LJM-DML, at *2-3 (S.D. Ill., October 30, 2014) (denying billing records, because they
`are neither an efficient nor appropriate discovery substitute, would require extensive redactions, and
`deposition testimony of prosecution counsel was sufficient to demonstrate counsel’s actions). Despite
`this, Juniper improperly seeks all invoices Ms. Bey ever issued to Finjan during the time she has
`prosecuted patents for Finjan, which is simply not relevant. Ex. A, Request No. 2; Finjan, Inc. v.
`Eset, LLC, No. 17CV183 CAB (BGS), 2018 WL 3126098, at *3 (S.D. Cal. June 25, 2018) (limiting
`production of invoices to the patents alleged to be unenforceable). Further, Juniper’s demand is
`beyond the documents requested in the subpoena, which limited invoices related to the Patents-in-
`Suit. See Request No. 2 (“[a]ll invoices related to the Patents-in-Suit.”). Juniper’s attempt to expand
`the scope of this clear Request using the potential breadth of the word “related” shows it continued
`over grasping. See n. 2. As such, Juniper has no basis to compel Ms. Bey to produce them.
`Material beyond those for Patents-in-Suit and Family Members (Requests 3-27)
`
`For Requests Nos. 3-27, Ms. Bey’s compromise position has been to search for and produce
`or log materials responsive to Juniper’s requests for Finjan’s Patents-in-Suit and family member of
`these patents. Juniper makes the unreasonable request for every communications with 16 separate
`individuals and entities, as well as “[a]ll communications with Finjan” and “[a]ll documents related
`to Finjan.” Ex. A, Requests Nos. 3-27. Ms. Bey has already searched for, collected, and produced
`or logged materials responsive to the request that are related to the Patents-in-Suit and other patents
`that are family members of the Patents-in-Suit. In particular, Ms. Bey is not withholding any non-
`privileged documents reflecting conception and reduction to practice. Juniper’s requests for material
`beyond this is overbroad, and it is unclear what Juniper is requesting, given the position they are
`taking with respect to the breadth of the term “relating to.” See n. 2. Finally, in many cases Juniper
`demands more than what its subpoena requested, as Juniper’s subpoena limited several of its requests
`specifically to “the Patents-in-Suit.” Ex. A, Requests Nos. 5-7 and 26. Juniper now alleges that it
`request material for Requests 3-27 for all of Finjan’s patents. There is absolutely no basis for Juniper
`to seek this material.
`Privilege and Redaction Logs
`
`The parties have never met and conferred as required by Local Rule 37-1(a) with respect to
`Juniper’s objections to the privilege and redaction logs for documents collected from Ms. Bey.
`Sufficient information has been provided in the privilege log and Juniper is not entitled to the specifics
`of the discussion within every logged communication. See, e.g., Baxter Healthcare Corp. v.
`Fresenius Med. Care Holding, Inc., No. C 07-1359 PJH (JL), 2009 WL 533124, at *1 (N.D. Cal. Mar.
`3, 2009) (log entry for document “regarding prosecution of U.S. Patent No. 4,778,451” sufficiently
`established claim of privilege). Juniper has not previously objected to the specificity of such logging.
`In fact, this is comparable to Juniper’s own privilege logs, which generally only identify broad subject
`matter such as “litigation strategy,” “SEC filings,” or “financial issues.” Further, Ms. Bey will not
`disclose privileged communications at trial, eliminating Juniper’s concerns on this issue.
`
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`10683012
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