Case 3:17-cv-05659-WHA Document 490 Filed 05/23/19 Page 1 of 7
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`FINJAN, INC.,
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`Plaintiff,
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`v.
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`JUNIPER NETWORK, INC.,
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`Case No. 17-cv-05659-WHA (TSH)
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`ORDER REGARDING DISCOVERY
`LETTER BRIEF
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`Re: Dkt. No. 484
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`Defendant.
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`This discovery dispute concerns Juniper’s tenth affirmative defense and fifth counterclaim
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`based on unclean hands, as well as its third counterclaim for inequitable conduct. See ECF No.
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`218, ¶¶ 193-212, 232-60. The essence of the unclean hands claim is that Finjan’s patent
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`prosecutor, non-party Dawn-Marie Bey, allegedly routinely claims a late priority date in patent
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`applications to prolong the length of the patent, which is to Finjan’s benefit in licensing
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`negotiations. But when it becomes clear that a PTO examiner will find the original priority date to
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`be ineffective to support a valid invention because of prior art, Bey routinely files a “Petition to
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`Accept Unintentionally Delayed Priority Claim” under 37 C.F.R. § 1.78(e), backdating priority to
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`escape invalidation. See ECF No. 190 at 9-11 (order summarizing the unclean hands claim).
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`Juniper’s theory is that the sheer number of times Bey has filed these petitions for Finjan belies
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`her representations to the PTO that the delayed priority claims were unintentional.
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`The inequitable conduct claim is a specific example of this backdating allegedly done in
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`connection with the ‘494 patent. There, Bey allegedly filed one of these petitions to backdate the
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`patent to overcome an invalidity problem, but at the earlier date not all of the authors had started
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`working for Finjan, so Bey also filed an amendment falsely getting rid of three of them as authors.
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`Or at least that’s what Juniper says.
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`Case 3:17-cv-05659-WHA Document 490 Filed 05/23/19 Page 2 of 7
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`To explore these claims, Juniper served a document subpoena on Bey. ECF No. 484-1.
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`The parties have met and conferred and have five disputes concerning the subpoena. ECF No.
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`484.
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`A.
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`Invoices for Bey’s Work on All of Finjan’s Patents, Not Just the Patents-in-Suit or
`Their Families
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`Bey was not the original prosecuting attorney of record on many of Finjan’s patents where
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`she later filed a petition to accept an “unintentionally” delayed claim of priority. Juniper reasons
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`that she would have had to discuss with the prior counsel their failure to claim priority before she
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`could submit such a petition in good faith. Juniper believes she didn’t do this and would like to
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`use the absence of such discussions as evidence that she had no basis to claim the delay was
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`unintentional because she couldn’t possibly have known.
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`To that end Juniper wants all of Bey’s invoices for her work on all of Finjan’s patents.
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`Juniper acknowledges that some entries in the invoices might be privileged and could be redacted,
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`but it argues that non-privileged facts such as names, dates, and the general subject matter of any
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`communications about Finjan’s patents is relevant. Presumably, for example, Juniper would find
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`the date of a Finjan petition to accept an unintentionally delayed claim of priority, and then search
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`the entries for the weeks or months leading up to that filing for any evidence of a communication
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`with the original patent prosecutor, and if it didn’t find any, would say this is circumstantial
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`evidence that the petition was a fraud. Bey agrees, as a compromise, to produce invoices only for
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`work on the asserted patents but not for work on any others. She disputes their relevance and also
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`argues the subpoena didn’t ask for them. As a backup at the telephonic hearing, she offered the
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`invoices for work concerning priority for patents in the same families as the asserted patents.
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`Let’s start with the subpoena. RFP No. 2 asked for “all invoices related to the Patents-in-
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`Suit.” The subpoena defined the patents-in-suit to mean the ‘494 patent, then ‘844 patent, the ‘780
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`patent, the ‘731 patent, the ‘633 patent, and the ‘154 patent. It also stated that “‘related’ shall be
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`construed broadly, and shall mean mentioning, discussing, referring to, pertaining to, reflecting, or
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`consulting.” Juniper argues that all of Bey’s invoices to Finjan come within the broad definition
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`of “related.” As a backstop, Juniper argues that even if they are not responsive to RFP No. 2, they
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`Case 3:17-cv-05659-WHA Document 490 Filed 05/23/19 Page 3 of 7
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`are certainly responsive to RFP No. 27, which asked for “all documents related to Finjan.” The
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`Court accepts the latter argument. Invoices for work on patents other than the patents-in-suit do
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`not come within the scope of RFP No. 2 because they do not mention, discuss, refer to (and so on)
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`the patents-in-suit, but they do come within RFP No. 27 because they relate to Finjan.
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`But are they relevant and proportional? The Court believes they are. The District Judge’s
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`order allowing the unclean hands claim to proceed stated that “[l]ooking at the forest instead of the
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`trees, we see a pattern and practice of bringing to the attention [of] the PTO critical information
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`only after the PTO examiner or industry itself has exposed the original priority date as ineffective
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`to support a valid invention. In light of this practice, it then becomes all the more suspicious that
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`Attorney Bey, time and again, would — only after potentially invalidating prior art is interposed
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`— give the same story of ‘unintentional delay’ in petitioning for a priority date conveniently
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`predating prior art.” ECF No. 190 at 11. This claim is about the forest, not the trees. It’s about a
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`pattern, a practice in which Bey time and again allegedly did something. To see if this claim has
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`merit, Bey cannot limit her production to invoices concerning the patents-in-suit or their families.
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`At the same time, to lessen burden, “[a]s a compromise, Juniper proposes that Ms. Bey produce all
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`invoices related to work analyzing priority or inventorship for Finjan’s patents, redacted to protect
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`any privileged legal advice.” ECF No. 484 at 2. In response to the Court’s questions at the
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`telephonic hearing, Juniper acknowledged that while the fifth counterclaim (concerning priority) is
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`about the forest, the third (inventorship) is a tree, meaning that it is limited to the ‘494 patent.
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`Accordingly, the Court adopts a modification of Juniper’s compromise and ORDERS Bey to
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`produce all invoices related to work analyzing priority for any of Finjan’s patents, or related to
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`work analyzing inventorship for the ‘494 patent, redacted to protect any privileged legal advice.
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`B.
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`All of Bey’s Petitions to Accept Unintentionally Delayed Claims of Priority, Not Just
`the Ones She Filed for Finjan
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`Bey has agreed to produce all of the backdating petitions she filed for Finjan, but Juniper
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`wants all the petitions she filed for her other clients as well. Juniper states that it “requested all of
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`Ms. Bey’s petitions to accept ‘unintentionally’ delayed claims of priority because they are critical
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`to understanding whether Ms. Bey’s pattern of behavior is unique to her relationship with Finjan,
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`Case 3:17-cv-05659-WHA Document 490 Filed 05/23/19 Page 4 of 7
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`or whether it is a common part of her practice for other clients.” ECF No. 484 at 2. The parties
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`primarily dispute the burden involved in this request, but the Court is struggling with its relevance.
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`The unclean hands claim is asserted against Finjan, obviously, not Bey. The gist of the
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`claim is that “Finjan has an unusually abundant history of petitioning for allegedly
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`‘unintentionally’ delayed claims of priority, particularly after one of Finjan’s patents is under
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`examination and has been rejected over prior art that predates the filing of the patent but post-dates
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`the belatedly claimed priority document.” ECF No. 218 ¶ 235. The idea is that Finjan is doing
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`something unusual in its patent prosecution, a departure from common practice that is suggestive
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`of wrongdoing. Well, that begs the question: unusual compared to what?
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`Surely the answer has to be something like: compared to what is normal in patent
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`prosecution generally, or at least what is normal in patent prosecution in the industry Finjan is in.
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`The problem with Juniper’s request is that what Bey does for her other clients is irrelevant because
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`she’s just one person. Her conduct simply does not establish what is normal in patent prosecution
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`generally or within a given industry.
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`If this were an attorney disciplinary proceeding, the Court would care whether Bey is
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`constantly filing these petitions for just Finjan or for all of her clients – although even then we
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`would still need to know if this behavior is objectively uncommon in the industry or in patent
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`prosecution generally before we could know if this looks like misconduct. But that’s not what this
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`case is about. Juniper is asserting its unclean hands claim not against Bey but against her client
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`Finjan. To show that Finjan in fact has an unusually abundant history of filing these petitions,
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`Juniper will need to compare Finjan’s history to some relevant measure of what is normal. Bey’s
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`conduct on behalf of her other clients in no way establishes what is normal. Getting all of her
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`petitions is not even a step in the direction of proving what is normal. A comparison of what Bey
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`does for Finjan against what she does for her other clients is just a random and meaningless
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`comparison.
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`As to burden, Bey makes a good case that the request is overly burdensome. According to
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`both sides, even though these petitions are public, there is no easy way to search for them. Bey
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`asserts that in her 20 years of being a patent prosecutor, she has had hundreds of clients. She says
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`Case 3:17-cv-05659-WHA Document 490 Filed 05/23/19 Page 5 of 7
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`it is no easier for her to search the public files than for Juniper to, and that she would have to
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`search through her client files to find the petitions. For clients predating 2013, she has 200 boxes
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`of archived files she would have to go through manually. For clients from 2013 to the present, she
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`can do an electronic search based on words to find documents in her document management
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`system, but then she would need to determine if each petition she finds actually got filed. As a
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`compromise, Juniper says it can provide search terms that would yield no more than a thousand
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`hits for Bey to review before her deposition. Juniper says nothing about the 200 boxes of
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`documents.
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`Juniper’s compromise would keep Bey busy before her deposition, but it also calls into
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`question the value of what would be produced. As explained above, the Court does not believe
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`that a comparison of Finjan’s practice of filing these petitions to how often Bey’s other clients
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`have filed these petitions has any relevance. But a comparison of a complete set of Finjan’s
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`petitions to an incomplete set of what Bey is able to find in a few days, and excluding everything
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`before 2013, for her other clients – well, the Court doesn’t even know how to characterize what
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`that is. That comparison is not apples to apples, or even apples to oranges. It’s an apple compared
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`to something of unknown quality.
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`Because the requested documents are irrelevant and any meaningful effort to produce them
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`is disproportional to the needs of the case, the Court DENIES Juniper’s request for Bey’s petitions
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`on behalf of her other clients.
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`C.
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`Communications with Prior Attorneys of Record About Priority or Inventorship.
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`Juniper requests communications between Bey and the prior attorneys of record who
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`prosecuted Finjan’s patents so Juniper can determine whether she had any communications
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`regarding the prior attorneys’ failure to claim priority or who they listed as inventors. This is
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`essentially the same issue as with the invoices. They want Bey ordered to produce the
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`communications so they can review them and argue there weren’t any. Bey agrees to produce
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`communications concerning the asserted patents, as well as communications related to family
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`members of the asserted patents, but that’s too narrow. The issue for the unclean hands claim is
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`the forest – the pattern, the practice, which goes to Finjan’s patents generally. However, as to the
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`Case 3:17-cv-05659-WHA Document 490 Filed 05/23/19 Page 6 of 7
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`third counterclaim, as pleaded it is limited to the ‘494 patent. The Court ORDERS Bey to
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`produce (or log on a privilege log) all communications with prior attorneys related to the analysis
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`of claims of priority for any of Finjan’s patents, as well as all communications with prior attorneys
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`related to the inventorship of the ‘494 patent.
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`D.
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`Privilege and Redaction Logs
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`Bey produced three privilege and redaction logs in response to the subpoena. ECF No.
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`483, Exs. 4, 5, 6. Not a single entry in the subject matter column references priority or
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`inventorship. Juniper argues that this violates paragraph 24 of Judge Alsup’s Supplemental Order
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`to Order Setting Initial Case Management Conference. The Court agrees, and independently of
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`that problem, believes the logs were drafted in an effort to hide discoverable information. The
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`subject matter descriptions are broad and generic, and – more to the point – in every case Bey’s
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`chosen description is something other than priority or inventorship. Stating that an email was
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`about priority or inventorship is a very high-level description that does not reveal the content of
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`the legal advice. Juniper is simply trying to find out whether Bey had discussions about priority or
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`inventorship, not what was said. In fact, Juniper’s theory is that there weren’t any such
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`communications. It appears that Bey intentionally drafted the logs to bury this discoverable
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`information. The Court ORDERS Bey to specify which entries on the logs relate to discussions
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`concerning claims of priority of any of Finjan’s patents or to the inventorship of the ‘494 patent.
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`She must do this as well for any logs she produces in response to this order.
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`E.
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`Communications with Inventors About Priority or About Inventorship of the ‘494
`Patent.
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`RFPs 5 and 6 ask for all documents related to the conception or reduction to practice of
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`any of the patents-in-suit. RFPs 8-11 seek all communications with the four individuals that
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`Juniper alleges are the authors of the ‘494 patent. The letter brief seeks narrower relief: “As a
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`compromise, Juniper proposes that Ms. Bey produce (or log) all communications with the
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`inventors regarding the priority date of any Finjan patent or inventorship of the ‘494 Patent.” This
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`narrowing is appropriate, in part because Juniper’s third counterclaim appears limited to the ‘494
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`patent. So narrowed, the request is relevant and proportional because it seeks documents showing
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`Case 3:17-cv-05659-WHA Document 490 Filed 05/23/19 Page 7 of 7
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`whether Bey performed any investigation into the priority date of any of Finjan’s patents or into
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`the inventorship of the ‘494 patent. Bey does not specifically respond to Juniper’s argument, and
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`sort of suggests she has already produced these materials. ECF No. 484 at 5. To the extent Bey
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`has not done so already, the Court ORDERS her to produce or log all communications with the
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`inventors regarding the priority date of any Finjan patent or the inventorship of the ‘494 Patent.
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`F.
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`Deadline
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`Bey’s deposition is currently scheduled for May 30, 2019 – seven days from now. To give
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`Juniper a fighting chance to review materials to prepare for the deposition, the Court ORDERS
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`Bey to produce the foregoing documents and information by Monday, May 27, 2019. As
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`discussed at the telephonic hearing, the Court also instructs the parties to meet and confer
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`regarding rescheduling the deposition. If they agree on an alternative date, they may also extend
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`this production deadline by agreement amongst themselves. If the parties run into difficulty
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`agreeing on an alternative deposition date or production deadline, they should contact the
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`undersigned’s courtroom deputy to set up a phone call with the Court.
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`IT IS SO ORDERED.
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`Dated: May 23, 2019
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`THOMAS S. HIXSON
`United States Magistrate Judge
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