UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner
`
`v.
`
`FINJAN, INC.,
`Patent Owner
`
`Patent No. 8,141,154
`
`_______________
`
`Inter Partes Review No. IPR2016-00151
`____________________________________________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER'S MOTION FOR
`ENTRY OF THE DEFAULT PROTECTIVE ORDER AND TO SEAL
`PATENT OWNER RESPONSE AND CERTAIN EXHIBITS UNDER 37
`C.F.R. §§ 42.14 AND 42.54
`
`
`
`
`
`va-481906
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner
`
`v.
`
`FINJAN, INC.,
`Patent Owner
`
`Patent No. 8,141,154
`
`_______________
`
`Inter Partes Review No. IPR2016-00151
`____________________________________________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER'S MOTION FOR
`ENTRY OF THE DEFAULT PROTECTIVE ORDER AND TO SEAL
`PATENT OWNER RESPONSE AND CERTAIN EXHIBITS UNDER 37
`C.F.R. §§ 42.14 AND 42.54
`
`
`
`
`
`va-481906
`
`
`
`IPR2016-00151
`
`
`
`Attorney Docket No. 719712801200
`
`In accordance with 37 C.F.R. § 42.64, Petitioner hereby opposes Patent
`
`Owner's Motion for Entry of the Default Protective Order and to Seal Patent
`
`Owner Response and Exhibits 2007, 2008, 2010, 2011, and 2035 filed on August
`
`31, 2016 in the above-captioned proceeding.
`
`Patent Owner requests that a large and significant portion of these
`
`proceedings be hidden from the public, but the Motion to Seal only provides
`
`conclusory, vague, and threadbare assertions of confidentiality in support of such
`
`an expansive concealment of the record. A Motion to Seal must include facts and
`
`reasoning necessary for its meaningful consideration. See Corning Optical
`
`Communications RF, LLC v. PPC Broadband, Inc., Case IPR2014-00736, pg. 2-3
`
`(PTAB April 14, 2015) (Paper 38). Patent Owner fails to meet this standard and
`
`thus fails to meet its burden of persuasion. Petitioner requests that the Board
`
`decline to seal the Patent Owner response and other exhibits as requested thus
`
`maintaining the public availability of these proceedings.
`
`A. Burden of Persuasion
`
`There is a strong public policy interest in making all information filed in an
`
`inter partes review publically available. See 35 U.S.C. §316(a). In light of this
`
`policy, the Board has required that motions to seal be pled under a heightened
`
`burden of persuasion. Specifically, a Motion to Seal must provide particular
`
`information with respect to the information alleged to be confidential. See LG
`
`va-481906
`
`1
`
`
`
`IPR2016-00151
`
`
`
`Attorney Docket No. 719712801200
`
`Electronics Inc. v. ATI Technologies ULC, IPR2015-00325, pg. 4 (PTAB April 14,
`
`2016) (Paper 63). First, the Board has required that the movant identify not just the
`
`information believed to be confidential and sought to be sealed, but also identify
`
`the need to rely on the allegedly confidential information. Id. Second, the movant
`
`must explain what adverse consequences and harm would result from public
`
`disclosure of each item of information sought to be sealed. Id. Third, the movant
`
`must balance all three: (1) the public’s interest in maintaining a complete and
`
`understandable record, (2) the harm to a party, by disclosure of the supposedly
`
`confidential information, and (3) the need to rely specifically on the information at
`
`issue. Id. As discussed in detail below, Patent Owner’s Motion to Seal either fails
`
`completely to address the above requirements or provides sparse and conclusory
`
`analysis, making meaningful consideration on the basis of the motion impossible.
`
`B. Analysis
`
`Patent Owner’s Motion to Seal fails to adequately address any of the
`
`elements required in order to meet its burden of persuasion. Specifically, Patent
`
`Owner fails to identify with any particularity what material it regards as
`
`confidential or why it needs to rely on such information. It only conclusory states
`
`that there would be adverse consequences if the unidentified confidential
`
`information were to be made public without providing any reasoning. Finally,
`
`va-481906
`
`2
`
`
`
`IPR2016-00151
`
`
`
`Attorney Docket No. 719712801200
`
`Patent Owner fails to meaningfully balance the public’s interest in maintaining a
`
`complete and understandable record.
`
`First, Patent Owner does not particularly identify the information it believes
`
`is confidential, nor does it identify the need to rely on the allegedly confidential
`
`information as required under its burden of persuasion. Patent Owner alleges that
`
`its entire Patent Owner Response as well as the subject exhibits contains “highly
`
`confidential information of a third party1,” but never identifies what information it
`
`considers confidential. See Motion at 2. For instance, Patent Owner seeks to have
`
`the entirety of its response sealed without identifying any specific portions of the
`
`Patent Owner response allegedly containing any confidential information. Patent
`
`Owner fails to engage in the required analysis with respect to the other exhibits it
`
`seeks to seal. Patent Owner points to a chart provided in their motion (reproduced
`
`below with annotation) and alleges that the chart outlines the confidential
`
`information in each exhibit. However, as shown below, Patent Owner’s chart does
`
`nothing more than circularly repeat the allegation that each exhibit and the
`
`response contain highly confidential information; the chart provides no
`
`identification of said information.
`
`1 The “third party” that Patent Owner Finjan, Inc. refers to is Finjan Software, Ltd.
`
`
`
`va-481906
`
`3
`
`
`
`IPR2016-00151
`
`
`
`Attorney Docket No. 719712801200
`
`
`
`Unsurprisingly, because it does not identify the specific information it
`
`regards as confidential, Patent Owner does not explain why it must rely on the
`
`“confidential” information as required under its burden of persuasion.
`
`Second, with respect to the requirement that the movant explain what
`
`adverse consequences and harm would result from public disclosure, Patent Owner
`
`merely provides conclusory statements. For instance, Patent Owner without
`
`explanation alleges that public disclosure of the response and exhibits “would
`
`allow competitors to access information that would significantly harm its successor
`
`entities competitive position in the marketplace.” Motion at 3. Such vague
`
`va-481906
`
`4
`
`
`
`IPR2016-00151
`
`
`
`Attorney Docket No. 719712801200
`
`assertions invite the Board to speculate as to whether any harm would result from
`
`the public disclosure of the response and exhibits in their entirety. The Board
`
`should decline such an invitation. Patent Owner’s conclusory statements and
`
`failure to identify any supposedly confidential information makes meaningful
`
`analysis of the Patent Owner’s allegation impossible.
`
`Finally, Patent Owner’s motion simply ignores the requirement that the
`
`movant must balance (1) the public’s interest in maintaining a complete and
`
`understandable record, (2) the harm to a party, by disclosure of the supposedly
`
`confidential information, and (3) the need to rely specifically on the information at
`
`issue. Patent Owner cryptically alleges that “[t]he public’s interest in accessing the
`
`information requiring that the Patent Owner Response and Subject Exhibits be
`
`sealed for the purposes of the patentability of the challenged claims is
`
`unquestionably outweighed by the prejudicial effect and competitive harm of
`
`disclosing the above described confidential information of third parties.” Motion at
`
`3 (emphasis added). Patent Owner’s bare characterization of their conclusion as
`
`“unquestionable” appears to constitute the entire extent of their analysis. Clearly,
`
`Patent Owner has not met its burden of persuasion.
`
`va-481906
`
`5
`
`
`
`IPR2016-00151
`
`
`
`Attorney Docket No. 719712801200
`
`C. Conclusion
`For the foregoing reasons, Petitioner requests that the Board maintain the
`
`public’s access to these proceeding and deny Patent Owner Motion to Seal the
`
`Patent Owner Response and Exhibits 2007, 2008, 2010, 2011, and 2035.
`
`
`
`
`Dated: September 30, 2016
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: / Shouvik Biswas /
`Shouvik Biswas
` Registration No.: 68,439
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`Tel: (703) 760-7774
`Attorney for Petitioner
`
`va-481906
`
`6
`
`
`
`IPR2016-00151
`
`
`
`Attorney Docket No. 719712801200
`
`
`
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached Petitioner’s Opposition to Patent Owner’s
`
`Motion for Entry of the Default Protective Order and to Seal Patent Owner
`
`Response and Certain Exhibits was served as of the below date on the Patent
`
`Owner via e-mail (by agreement) to the following counsel of record for the Patent
`
`/ Kim Helenius /
`Kim Helenius
`
`
`Owner:
`
`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: (650) 752-1712
`Fax: (650) 752-1812
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`svdocketing@kramerlevin.com
`mkim@finjan.com
`
`
`
`
`Dated: September 30, 2016
`
`
`
`
`va-481906
`
`7
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
