Trials@uspto.gov
`571-272-7822
`
`
`Paper 50
`Entered: February 24, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00151
`Patent 8,141,154 B2
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Motion to Seal and Entry of Protective Order
`37 C.F.R. § 42.14 and 42.54
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 50
`Entered: February 24, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00151
`Patent 8,141,154 B2
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Motion to Seal and Entry of Protective Order
`37 C.F.R. § 42.14 and 42.54
`
`
`
`
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`
`Finjan, Inc. (“Patent Owner”) filed a Motion for Entry of the Default
`Protective Order and to Seal Patent Owner’s Response and Exhibits 2007,
`2008, 2010, 2011, and 2035. Paper 20 (“Patent Owner’s Motion,” “Mot.”),
`1. Petitioner opposes Patent Owner’s Motion. Paper 23 (“Petitioner’s
`Opposition,” “Opp.”). Having reviewed the Motion, the documents sought
`to be sealed, Petitioner’s Opposition, and Patent Owner’s Reply,1 we deny
`the Motion.
`“There is a strong public policy for making all information filed in a
`quasi-judicial administrative proceeding open to the public, especially in an
`inter partes review which determines the patentability of claims in an issued
`patent and therefore affects the rights of the public.” Garmin Int’l v. Cuozzo
`Speed Techs., LLC, IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013)
`(Paper 34). A motion to seal may be granted for good cause. 37 C.F.R.
`§ 42.54. The moving party bears the burden of showing that there is good
`cause for the relief requested, including why the information is appropriate
`to be filed under seal. 37 C.F.R. §§ 42.20, 42.54. The Office Patent Trial
`Practice Guide notes that 37 C.F.R. § 42.54 identifies confidential
`information in a manner consistent with Federal Rule of Civil Procedure
`26(c)(1)(G), which provides for protective orders for trade secret or other
`confidential research, development, or commercial information. 77 Fed.
`Reg. at 48,760. Until a motion to seal is decided, documents filed with the
`motion shall be sealed provisionally. 37 C.F.R. § 42.14.
`
`
`
`1 Paper 29 (“Reply”).
`
`
`
`
`2
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`
`ALLEGED GOOD CAUSE
`I.
`Patent Owner argues that the Patent Owner Response and identified
`exhibits contain “highly confidential information regarding internal research
`and development efforts of a third party.” Mot. 1. Patent Owner, however,
`fails to identify with specificity which portions of these documents disclose
`the alleged internal research and development efforts and who is the third
`party.2 The exhibits subject to the Motion all appear to pertain, directly or
`tangentially, to Patent Owner’s efforts to show invention of the ’154 patent’s
`subject matter before the patent’s filing date.
`Patent Owner’s Motion does not provide a particularized showing, for
`each document, as to what specific content constitutes the alleged
`confidential research and development. In this regard, we find that Patent
`Owner has failed to address why the public interest does not outweigh its
`alleged interest in protecting the alleged confidential information. This
`failure is particularly troubling with respect to the requested sealing of
`Patent Owner Response in its entirety. This Response is not limited to
`discussing evidence on the issue of prior making of the invention. The
`request for the Patent Owner Response to be filed entirely under seal is
`unavailing, especially when there is no showing that the information sought
`
`
`2 This statement in the Motion is confusing as it insinuates that Finjan
`Software is a third party. However, in the Reply, Patent Owner argues that
`Eitan Law Group is the third party. Reply 1. It is not apparent how the law
`firm’s email stating that the patent application was filed constitutes
`“information regarding internal research and development efforts of a third
`party.”
`
`3
`
`
`
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`to be sealed constitutes “confidential research, development, or commercial
`information.”
`As stated above, there is a presumption that the record of our
`proceedings, including documents and things, shall be made available to the
`public. 37 C.F.R. § 42.14. See also Apple Inc. v. Samsung Electronics Co.
`Ltd., 727 F.3d 1214, 1221 (Fed. Cir. 2013)(courts have recognized a general
`right to inspect and copy public records and documents). Accordingly,
`Patent Owner bears the burden of showing that the information sought to be
`sealed is worthy of protection. Nowhere in Patent Owner’s Motion do we
`find any compelling reason to overcome this presumption.
`Patent Owner’s claim of confidentiality is not supported by any
`credible evidence. Alleging that the information is in “internal documents”
`not made public is insufficient. The information may have been derived
`from non-public documents, but that alone does not make the information
`confidential research, development, or commercial information.
`Patent Owner’s characterization of the information as “truly sensitive”
`or “research and development efforts and strategies” also is not persuasive.
`Patent Owner does not even attempt to show how the two already redacted
`emails, between the inventor and the prosecuting attorney (exhibits 2007 and
`2008), reveal “research and development efforts and strategies.” Even under
`a generous view of Patent Owner’s claim of confidentiality, the emails,
`which are devoid of any substantive discussions, at best, are routine
`communications made in connection with the filing of the ’154 patent. We
`find no discussion, substance, or inference that could be drawn from the
`
`
`
`
`4
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`contents regarding efforts and strategies in connection with research and
`development at Finjan.
`In its Reply, Patent Owner makes a general allegation that there is no
`need for dissemination to the public of “personally identifiable information
`of individuals.” Reply 2. We are not persuaded by this assertion. Patent
`Owner has not identified what information arguably constitutes “personally
`identifiable information.” Patent Owner discloses no particular individuals
`whose personally identifiable information is in jeopardy of disclosure, or
`why this information is per se protectable without a showing of harm or
`even a further argument. Nor do we find that Patent Owner has addressed
`why it believes it has “standing” to seek protection for information from
`alleged “third parties.”
`The whole request is very confusing, conclusory, and feebly tied to
`the Board’s requirements that the movant show with particularity the reasons
`for seeking information to be filed under seal. See LG Electronics, Inc. v.
`ATI Technologies ULC (PTAB April, 14 2016) (Paper 63) (addressing the
`requirement of identifying the information believed to be confidential,
`explaining the harm that would result from the disclosure, and balancing the
`needs of the party with the need for a complete public record).
`II. DISCUSSION OF ALLEGED HARM
`Patent Owner argues that “allowing competitors to access such
`confidential information would significantly harm Finjan’s competitive
`position in the marketplace.” Reply 2. The explanation provided for this
`alleged harm is generic, and circles back to the assertion of the information
`as “relating to Finjan’s research and development strategies and competitive
`
`
`
`
`5
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`advantages.” See id. at 2−3. This claim of harm is not supported by
`evidence, only attorney argument that we find unpersuasive.
`As stated above, Patent Owner has not shown sufficiently that the
`information concerns internal research and development efforts.
`Furthermore, it appears that Patent Owner’s contention of harm uses the
`non-public nature of the documents per se to provide the basis for their
`protection. This argument is insufficient. Notwithstanding the non-public
`nature of a document, Patent Owner must show that a particular, non-
`speculative harm would result from the disclosure and balance the needs of
`the party to rely on the information with the Board’s objective of providing a
`complete public record of the proceeding. See LG Electronics, slip op. at
`5−7.
`
`We have reviewed the documents sought to be sealed and are not
`persuaded that Patent Owner has shown they constitute internal research and
`development efforts and strategies or that the information includes
`personally identifiable information that weighs in favor of sealing entire
`briefs and documents. In sum, Patent Owner’s request is overbroad, lacks a
`credible explanation of harm, and fails to balance the interests of providing a
`public record with the need for the party to rely on the information.
`III. CONCLUSION
`We find that Patent Owner has failed to meet its burden of showing
`that the documents sought to be sealed contain information that constitutes a
`“trade secret or other confidential research, development, or commercial
`information,” as provided in 37 C.F.R. § 42.54 (a)(7). We also find that
`Patent Owner failed to demonstrate actual harm that would result from the
`6
`
`
`
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`disclosure of the information and a persuasive explanation as to why entire
`documents, including Patent Owner’s Response, should be sealed in light of
`the strong interest of making the record public in this proceeding.
`IV. ORDER
`It is hereby
`ORDERED that Patent Owner’s Motion (Paper 20) is denied in its
`entirety; and
`FURTHER ORDERED that Patent Owner may request a conference
`with the Board within 5 days from the issuance of this Decision to address
`any questions Patent Owner may have regarding this Decision.
`
`
`
`
`
`7
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`PETITIONER:
`Matthew I. Kreeger
`Jonathan Bockman
`Shouvik Biswas
`MORRISON & FOERSTER LLP
`MKreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Nathaniel A. Hamstra
`nathanhamstra@quinnemanuel.com
`
`
`PATENT OWNER:
`James Hannah
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`Michael Kim
`mkim@finjan.com
`
`
`
`
`8
`
`
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