Finjan, Inc. v. ESET, LLC et al

Filing 71

Order re Joint Report On Protective Order 69 . Signed by Judge James Donato on January 9, 2017. (jdlc1S, COURT STAFF) (Filed on 1/9/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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FINJAN, INC.,
Plaintiff,

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United States District Court
Northern District of California

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Case No.16-cv-03731-JD
ORDER RE PROTECTIVE ORDER

v.

Re: Dkt. No. 69
ESET, LLC, et al.,
Defendants.

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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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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
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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United States District Court
Northern District of California

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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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