The opinion of the court was delivered by: James F. Holderman Chief Judge, United States District Court
Consolidated for Discovery
MEMORANDUM OPINION AND ORDER JAMES F. HOLDERMAN, Chief Judge:
Pending before the court is Tellabs's "Motion to Strike Portions of Fujitsu's Expert Reports and to Preclude Reliance by Fujitsu on Theories, Evidence, or Analyses Precluded Under the Court's Order of March 21, 2012." (Dkt. No. 568.) For the reasons set forth below, Tellabs's motion is granted in part and denied in part. Tellabs's motion is granted as to those portions of the Willner Infringement Report and the Willner Supplemental Infringement Report that rely on an analysis of the LIAM-E, LRAM-E, ELRAM-E, SPM-N, DPM, DCM, SPM, or APM modules for purposes of proving infringement of the '681 Patent. To the extent Tellabs's motion relates to the '737 Patent, the '163 Patent, and the '418 Patent, Tellabs's motion is denied without prejudice at this stage of the litigation. Additionally, Tellabs's motion is denied as moot with respect to the portions of the Willner Infringement Report, the Willner Supplemental Infringement Report, and the Fujitsu Damages Report voluntarily withdrawn by Fujitsu, including references to the modules excluded in the court's March 21, 2012 Order, (Dkt. No. 552 at 16 n.10), and references to the doctrine of equivalents. As to the portions of the Willner Infringement Report and the Willner Supplemental Infringement Report that analyze indirect infringement, Tellabs's motion is denied.
These determinations are explained below. Although the court is sensitive to the parties' concern for confidentiality, an adjudicative determination by a United States District Court must be explained on the public record, as the court has done here. See Hicklin Engineering L.C. v. Bartell, 439 F.3d 346, 348 (7th Cir. 2006) ("What happens in the federal courts is presumptively open to public scrutiny. . . . Any step that withdraws an element of the judicial process from public view makes the ensuing decision look more like fiat and requires rigorous justification.").
Tellabs's motion is directed at specific portions of four of Furjitsu's expert reports:
* "Expert Report of Dr. Alan E. Willner Regarding Infringement With Respect to U.S. Patent No. 7,227,681, U.S. Patent No. 5,521,737, and U.S. Patent No. 5,526,163" (Dkt. Nos. 568-2 to 568-6 FILED UNDER SEAL ("Willner Infringement Report"))
* "Supplemental Expert Report of Dr. Alan E. Willner Re: Infringement of the MIAM Module With Respect to U..S. Patent No. 7,227,681" (Dkt. No. 568-7 FILED UNDER SEAL ("Willner Supplemental Infringement Report"))
* "Expert Report of John Eaves Regarding Infringement With Respect to U.S. Patent No. 5,386,418" (Dkt. No. 568-8 FILED UNDER SEAL ("Eaves Infringement Report Re: '418 Patent"))
* "Expert Report of Christopher J. Bokhart" (Dkt. No. 568-9 FILED UNDER SEAL ("Fujitsu Damages Report"))
The court assumes familiarity with the court's March 21, 2012 order, (Dkt. No. 552 ("3/21/12 Order")), as well as the general history of this patent litigation.
In light of the bifurcation of the issues pending before the court, and the court's decision to proceed to trial solely on the '681 Patent at this stage of the litigation, the court need not address Tellabs's contentions as they pertain to the '737 Patent, the '163 Patent, or the '418 Patent. To the extent Tellabs's motion addresses these additional patents, Tellabs's motion is denied without prejudice and may be renewed at an appropriate point in the litigation.
Additionally, Fujitsu has agreed to withdraw certain portions of the Willner Infringement Report addressing modules that were specifically identified in this court's March 21, 2012 Order denying Fujitsu's "Motion to Set a Schedule to Serve Final Infringement Contentions and in the Alternative to File Amended Final Infringement Contentions." (See 3/21/12 Order at 16, n.10.) Specifically, Fujitsu has agreed to withdraw, without prejudice, paragraphs 142-48; 260-78; 298; 383-87; 389-90; 392-93; 395-98; 400-01; 403-04; 407-08; 411-14; 416-17; 419-20; 422-669; 674; 678-90; 753; 758-59; 762-67; 769-72; 775-78; 783-86; 791; 799-802; 805-08; 811-14; 818-21; 825-28; 833; 899-916; 918; and 935 of the Willner Infringement Report, subject to Fujitsu's proffer to the court. (See Dkt. No. 590 ("Fujitsu's Resp.") at 4, n.1.) Fujitsu has also agreed to voluntarily withdraw without prejudice the contested portions of the Fujitsu Damages Report. (Id. at 10.) Lastly, Fujitsu has ...