Finjan, Inc. v. Zscaler, Inc.

Filing 114

ORDER by Judge Kandis A. Westmore Regarding 102 Joint Discovery Letter; Terminating 106 Update to Discovery Letter Brief; Denying 111 Administrative Motion to Strike. (kawlc2, COURT STAFF) (Filed on 2/25/2019)

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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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ORDER REGARDING JOINT
DISCOVERY LETTER;
TERMINATING UPDATE; DENYING
MOTION TO STRIKE

v.

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ZSCALER, INC.,

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United States District Court
Northern District of California

Case No. 17-cv-06946-JST (KAW)

Defendant.

Re: Dkt. Nos. 102, 106, 111

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Plaintiff Finjan, Inc. filed the instant complaint against Defendant Zscaler, Inc., asserting

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patent infringement. (Compl., Dkt. No. 1.) On January 23, 2019, the parties filed a joint

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discovery letter regarding Plaintiff's production of confidential business information from third

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parties. (Discovery Letter, Dkt. No. 102.) On February 4, 2019, Plaintiff incorrectly filed an

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update as a pending motion. (Plf.'s Update, Dkt. No. 106.) On February 6, 2019, Defendant filed

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an administrative motion to strike Plaintiff's update. (Def.'s Mot. to Strike, Dkt. No. 111.)

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Having reviewed the parties' filings, the Court GRANTS IN PART and DENIES IN PART

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the relief sought in the January 23, 2019 joint discovery letter, TERMINATES the February 4,

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2019 discovery letter, and DENIES Defendant's motion to strike as moot.

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I.

BACKGROUND

On April 12, 2018, Defendant served requests for the production of documents from other

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litigation Plaintiff was engaged in involving overlapping patents, including transcripts of

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Plaintiff's witness testimony, expert reports and declarations regarding claim construction and

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invalidity, and Plaintiff's damages reports. (Discovery Letter at 1.) Plaintiff refused to produce

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documents to the extent they contained confidential information from third parties. (Id.)

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On June 19, 2018, the presiding judge approved the parties' amended stipulated protective

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order. (Stipulated Protective Order, Dkt. No. 50.) The stipulated protective order states, in

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relevant part:

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United States District Court
Northern District of California

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(b) In the event that a Party is required, by a valid discovery request,
to produce a Non-Party's confidential information in its possession,
and the Party is subject to an agreement with the Non-Party not to
produce the Non-Party's confidential information then the Party
shall:
1. promptly notify in writing the Requesting Party and the
Non-Party that some or all of the information requested is subject to
a confidentiality agreement with a Non-Party;
2. promptly provide the Non-Party with a copy of the
Protective Order in this litigation, the relevant discovery request(s),
and a reasonably specific description of the information requested;
and
3. make the information requested available for inspection by
the Non-Party.
(c) If the Non-Party fails to object or seek a protective order from
this court within 14 days of receiving the notice and accompanying
information, the Receiving Party may produce the Non-Party's
confidential information responsive to the discovery request. If the
Non-Party timely seeks a protective order, the Receiving party shall
not produce any information in its possession or control that is
subject to the confidentiality agreement with the Non-Party before a
determination by the court.
(Protective Order ¶ 11.)
On June 20, 2018, the presiding judge held a case management conference, during which

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Plaintiff "agree[d] to contact third parties regarding production of confidential business

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information per the parties' stipulated protective order." (Dkt. No. 51 at 1.) Plaintiff then

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identified fourteen third parties whose confidential business information could be subject to

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production. (Discovery Letter at 2.) On July 18 and 19, 2018, Plaintiff e-mailed the fourteen third

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parties to determine which documents the third parties were willing to produce. (Id. at 2, 5.)

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Defendant was copied on each of the e-mails, and would explain to Plaintiff and the third parties

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what it was seeking. (Id.) Defendant contends, however, that Plaintiff is still withholding

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responsive documents from at least six past or parallel litigations. (Id.)

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On January 23, 2019, the parties filed a joint discovery letter, in which Defendant requests
that the Court: (1) order Plaintiff to identify responsive documents that it continues to withhold,
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(2) provide notice to any implicated third party that they have fourteen days to seek a protective

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order, and (3) order Plaintiff to produce all documents if the non-party does not file a motion for a

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protective order. (Discovery Letter at 3.)

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On February 4, 2019, Plaintiff filed an update as a discovery letter, stating that third-parties

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Cisco and Eset had authorized it to produce certain confidential information. (Update at 2.) On

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February 5, 2019, Defendant e-mailed Plaintiff, asking them to stipulate to a motion to strike the

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update from the docket. (Def.'s Mot. to Strike, Exh. 2 at 1.) Plaintiff responded that they were

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willing to meet and confer to discuss a joint update, and to withdraw the current update. (Id.)

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Defendant replied that it would "consider" submitting a joint update if Plaintiff first provided a
date certain for the production of documents from Cisco and Eset and identified which responsive

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United States District Court
Northern District of California

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documents Plaintiff continued to withhold. (Def.'s Mot. to Strike, Exh. 3.) The parties were

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unable to come to an agreement, and on February 6, 2019, Plaintiff filed a motion to strike the

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update. On February 11, 2019, Defendant filed its opposition to Plaintiff's motion to strike.

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(Def.'s Opp'n, Dkt. No. 112.)

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II.

DISCUSSION

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A.

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The Court finds that Plaintiff improperly filed the update as a pending motion; as Plaintiff

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admits, the update is not a motion that seeks relief and does not raise any new discovery disputes,

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but instead, simply provides an update as to an existing dispute. (See Def.'s Opp'n at 2.)

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Accordingly, the Court TERMINATES the update. Because the Court terminates the update, the

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Court DENIES Defendant's motion to strike as moot.

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Update and Motion to Strike

In the future, the parties shall meet and confer, and file a joint update only if necessary to

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assist the Court's decision. The update shall not be filed as a pending motion. Further, the parties

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should not condition the filing of a joint update on the provision of certain relief; if the parties

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cannot agree as to the content of the update, they shall state their respective positions.

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B.

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As an initial matter, the parties do not agree which third parties Defendant is still seeking

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information from. Defendant asserts that documents are being withheld "from at least six past or

Confidential Information

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parallel litigations." (Discovery Letter at 2.) Plaintiff states that Defendant had represented that

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the dispute was related to only six third parties, and that the meet and confer was therefore limited

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to those six entities. (Discovery Letter at 4 n.7.) Plaintiff further states that the remaining third

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parties already "produced information and/or objected to some of the overbroad categories that

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[Defendant] requested," and that Defendant had "reached an agreement with many on the scope of

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their confidential information to be produced." (Id. at 5.) Defendant does not dispute Plaintiff's

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characterization that the meet and confer was limited to the six third parties, or that it has already

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come to an agreement with the remaining third parties. (See id. at 4.) The Court, however, finds it

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efficient to address this dispute to the extent there are any remaining third-party documents to be

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United States District Court
Northern District of California

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produced.
The parties' primary dispute is what Plaintiff's obligations are under the stipulated

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protective order. The Court agrees with Plaintiff that the stipulated protective order does not

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require Plaintiff to produce the third parties' designated confidential business information, even if

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the third parties have not filed a motion for a protective order. Instead, the stipulated protective

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order states that Plaintiff "may produce the Non-Party's confidential information responsive to the

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discovery request." (Stipulated Protective Order ¶ 11(c) (emphasis added).)

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Although the permissive language in the protective order does not require Plaintiff to

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produce the third parties' designated confidential business information, the Court finds that

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Plaintiff still has an obligation to cooperate in discovery. Moreover, the purpose of providing the

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third parties with notice about the third parties' protected material to be produced "is to alert the

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interested parties to the existence of this Protective Order and to afford the Designating Party in

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this case an opportunity to try to protect its confidentiality interests in the court from which the

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subpoena or order issued." (Stipulated Protective Order at 15 n.3.) Its purpose is not to excuse

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production indefinitely, even if the third parties take no action or position.

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Accordingly, the Court ORDERS Plaintiff to, within ten days of this order, identify for

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Defendant the categories of documents that Plaintiff is still withholding as confidential for each of

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the third parties, i.e., prior art, invalidity contentions, invalidity expert reports, deposition

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transcripts of experts relating to invalidity, licensing agreements, etc. The parties shall then
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immediately meet and confer in good faith with the third parties to determine which documents

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Defendant still requires, and whether the parties and third parties can come to an agreement as to

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production. Plaintiff shall provide a copy of this order to each of the third parties during the meet

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and confer process. If the parties and third parties are unable to come to an agreement, the third

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parties shall file a motion for a protective order within thirty days of the date of this order, absent a

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request for an extension of time. If the third parties do not file a motion for a protective order or a

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request for an extension of time, Plaintiff shall produce the requested documents as "confidential

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or "highly confidential - attorney's eyes only."

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IT IS SO ORDERED.
Dated: February 25, 2019
__________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

United States District Court
Northern District of California

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