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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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`ESET, LLC, et al.,
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`Defendants.
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`Case No.16-cv-03731-JD
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`ORDER RE PROTECTIVE ORDER
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`Re: Dkt. No. 69
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`This Order resolves the impasse between the parties on the scope of the patent prosecution
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`bar in the protective order. Dkt. No. 69. On November 22, 2016, Finjan asked the Court to
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`modify the District’s Model Protective Order to allow Finjan’s attorneys who receive confidential
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`information in this litigation to participate in inter partes review proceedings, but not in amending
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`claims. Dkt. No. 64 at 1. Finjan said that its lawyers are currently defending Finjan’s patents in
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`nine inter partes review proceedings. Id. The Court granted Finjan’s request, limited to the nine
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`pending proceedings. Dkt. No. 67. Finjan now seeks a broader exemption that would allow its
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`litigation counsel to represent it in any future-filed post-grant proceedings. Dkt. No. 69. The
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`request is granted in part.
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`Generally, “a party seeking imposition of a patent prosecution bar must show that the
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`information designated to trigger the bar, the scope of the activities prohibited by the bar, the
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`duration of the bar, and the subject matter covered by the bar reasonably reflect the risk presented
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`by the disclosure of propriety competitive information.” In re Deutsche Bank Trust Co. Americas,
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`605 F.3d 1373, 1381 (Fed. Cir. 2010). In this district, the model protective order establishes a
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`presumption of a “prosecution bar,” which includes a bar on original prosecution, reissue and
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`reexamination proceedings. Grobler v. Apple Inc., No. C-12-01534 JST (PSG), 2013 WL
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`United States District Court
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`Case 3:17-cv-00183-CAB-BGS Document 71 Filed 01/09/17 PageID.1750 Page 2 of 2
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`3359274, at *1 (N.D. Cal. May 7, 2013); see also Kelora Sys., LLC v. Target Corp., No. C-10-
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`04947 CW (LB), 2011 WL 6000759, at *2 (N.D. Cal. Aug. 29, 2011). Under these circumstances,
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`the burden is shifted to the patentee to “establish that an exemption from the bar is appropriate.”
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`Grobler, 2013 WL 3359274, at *1.
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`Finjan has met that burden and the Court adopts its proposal, with one modification. In
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`addition to not participating in claim amendment, Finjan’s counsel may handle only review
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`proceedings initiated by third-parties, and only to defend the validity of a challenged patent.
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`While the Court recognizes that reexamination or review proceedings do not involve the
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`broadening of patent claims, there is still some risk that confidential information could be misused
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`in claim restructuring. Id. This limitation is consistent with the principles of the model protective
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`order and the practice of allowing litigation counsel a “limited role” in review and reexamination
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`proceedings when highly confidential information such as source code is involved. See EPL
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`Holdings, LLC v. Apple Inc., No. C-12-04306 JST (JSC), 2013 WL 2181584, *3-4 (N.D. Cal.
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`2013). ESET says it is concerned that the prosecution bar cannot be reasonably enforced, but that
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`risk is inherent in protective orders and does not warrant a broader prosecution bar in this instance.
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`See Grobler, 2013 WL 3359274, at *4. ESET is assured that the Court will promptly address any
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`violations with a firm hand.
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`Parties will submit a protective order conforming to this Order by January 20, 2017.
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`IT IS SO ORDERED.
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`Dated: January 9, 2017
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`JAMES DONATO
`United States District Judge
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`United States District Court
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