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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

THE REGENTS OF THE UNIVERSITY OF 

CALIFORNIA,

Plaintiff,

v.

ROGER JINTEH ARRIGO CHEN, et al.,

Defendants.

Case No. 16-cv-07396-EMC 

ORDER GRANTING IN PART AND 

DENYING IN PART DEFENDANTS’

ADMINISTRATIVE MOTION TO FILE 

DOCUMENTS UNDER SEAL

Docket No. 86

Defendants request to seal certain portions of their motion to join third-party Oxford 

Nanopore Technologies, Inc. (“Oxford”) and attached exhibits because Plaintiff Regents of the 

University of California (“UC”) has designated the documents “confidential” or “attorneys’ eyes 

only” under the stipulated protective order in the case. Consistent with Rule 79-5, Plaintiff filed a 

declaration (albeit 1 day late) to support its designation. Plaintiff’s declaration fails to justify 

sealing of nearly all of the submitted material, except for narrow portions revealing specific 

royalty rates or pricing data and e-mails reflecting confidential business strategies. Defendants’ 

motion is thus GRANTED IN PART and DENIED IN PART.

I. LEGAL STANDARD

“[T]he courts of this country recognize a general right to inspect and copy public records 

and documents, including judicial records and documents.” Nixon v. Warner Communications, 

Inc., 435 U.S. 589, 597 (1978). Courts therefore begin “with a strong presumption in favor of 

access to court records.” Foltz v. State Farm Mut. Auto Ins. Co., 331 F.3d 1122, 135 (9th Cir. 

2003). This presumption “promot[es] the public’s understanding of the judicial process and of 

significant public events,” Valley Broad Co. U.S. Dist. Court-D. Nev., 798 F.2d 1289, 1294 (9th 

Cir. 1986), and ensures “a measure of accountability and for the public to have confidence in the 
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United States District Court

Northern District of California

administration of justice.” United States v. Amodeo (Amodeo II), 71 F.3d 1044, 1048 (2d Cir. 

1995). A party seeking to seal judicial records therefore bears the burden of demonstrating that 

the request overcomes the strong public presumption of public access. The party’s burden “will 

turn on whether the motion is more than tangentially related to the merits of a case.” Center for 

Auto Safety v. Chrysler Grp., LLC, 809 F.3d 1092, 1101 (9th Cir. 2016). If so, then sealing must 

be supported by “compelling reasons;” if not, then sealing need only be supported by “good 

cause.” Id. at 1101-1102. 

Under the more stringent compelling reasons standard, “the party must articulate 

compelling reasons supported by specific factual findings” that outweigh the general history of 

access and the public policies favoring disclosure, such as the public interest in understanding the 

judicial process.,” and “the court must conscientiously balance the competing interests of the 

public and the party who seeks to keep certain judicial records secret.” Kamakana v. City and Cty. 

of Honolulu, 447 F.3d 1172, 1178-79 (9th Cir. 2006) (citations, quotations, and alterations 

omitted). Compelling reasons may exist when sealing prevents judicial documents from being 

used “as sources of business information that might harm a litigant’s competitive standing,” such 

as “the pricing terms, royalty rates, and guaranteed minimum payment terms” of a licensing 

agreement. In re Electronic Arts, 298 Fed. App’x 568, 569-70 (9th Cir. 2008) (quotation omitted)

In contrast, because “[t]he public policies that support the right of access to dispositive 

motions, and related materials, do not apply with equal force to non-dispositive materials,” the less 

stringent “good cause” standard merely requires a “particularized showing” sufficient “to warrant 

preserving the secrecy of sealed discovery material[.]” Kamakana, 447 F.3d at 1179-80 (citations 

and quotations omitted). Nevertheless, even under the good cause standard, a request for sealing 

“must be narrowly tailored to seek sealing only of sealable material.” Local Civ. R. 79-5(b). 

II. DISCUSSION

Neither party made any attempt to identify whether the “good cause” or “compelling 

reasons” standard applies to a Rule 19 motion for joinder and the Court is unaware of binding 

precedent. The principles animating Center for Auto Safety suggest that the “compelling reasons” 

standard should apply to the motion at hand. This case involves an ownership dispute over certain 
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United States District Court

Northern District of California

patented (or patent pending) technologies. In particular, Plaintiff UC alleges that Defendant Chen 

invented the disputed technologies while a graduate student researcher at UC and therefore that 

UC is the rightful owner pursuant to a contractual agreement with Chen. Defendants seek to join 

Oxford as a party based on its purported financial interest in Plaintiff UC’s legal claims and its 

independent claim of ownership over the same patented technologies at issue in this case. Thus, 

the Rule 19 motion involves issues close to the merits because it relates to the question who owns, 

claims to own, or has a legal or financial interest in the disputed patents.

Nevertheless, Plaintiff’s request to seal does not even pass the more lenient “good cause” 

standard. First, Plaintiff’s sealing request is not “narrowly tailored,” Local Civ. R. 79-5(b), but 

rather sweeps all terms of Oxford’s exclusive licensing agreement with UC with respect to the 

disputed patents at bar, including the agreement’s very existence. Plaintiff’s sole justification is 

that the agreement, in addition to excerpts of Defendants’ brief paraphrasing or quoting it, includes 

“sensitive information pertaining to terms, patents, and technology related to confidential license 

agreements” whose disclosure “may cause competitive harm . . . by revealing . . . confidential 

business, negotiation, and licensing strategies.” Plunkett Decl. ¶ 5 (emphasis added). Such vague 

speculation does not meet the good cause standard. See Foltz, 331 F.3d at 1131 (good cause 

standard requires a “particular showing” that “specific prejudice or harm” will result from 

disclosure (emphasis in original)). Plaintiff does not explain how disclosure of the mere existence 

of the licensing agreement can cause competitive harm. 

Plaintiff is correct that good cause may exist to seal certain aspects of the licensing 

agreement, such as the pricing terms, royalty rates, or specific payment terms. See In re 

Electronic Arts, 298 Fed. App’x at 569-70. But Plaintiff has not explained why all other 

provisions must also remain under seal to protect it from competitive harm. Compare Apple Inc. 

v. Samsung Electronics Co., Ltd., 727 F.3d 1214, 1225 (Fed. Cir. 2013) (recognizing competitive 

harm could result from disclosure of product-specific “profit, cost, and margin data” because it 

could “give . . . suppliers an advantage in contract negotiations, which they could use to extract 

price increases for components”). That includes the provisions granting Oxford the irrevocable 

option to request assignment of any of UC’s claims relating to improper ownership assertions of 
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the patents at issue, to prosecute actions for infringement on behalf of UC, as well as contract 

terms related to litigation funding. 

With the exception of specific pricing, payment, and royalty terms that could cause 

competitive harm, the Court DENIES Defendants’ motion to seal its brief in support of joining 

Oxford as a party, and Exhibits A, B, C, and M to said motion. Plaintiff has withdrawn its 

designation to seal Exhibit N so the Court DENIES the sealing motion in that regard. The Court 

GRANTS the request to seal Exhibits Q and R, e-mails that reflect business and negotiation 

strategies, disclosure of which Plaintiff asserts will cause competitive harm. 

Defendants shall file the requisite revised documents consistent with Local Rule 79-5(f).

This order disposes of Docket No. 86.

IT IS SO ORDERED.

Dated: April 27, 2018

______________________________________

EDWARD M. CHEN

United States District Judge