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Fujitsu Limited v. Tellabs

April 5, 2013


The opinion of the court was delivered by: James F. Holderman, Chief Judge:


In three related lawsuits, Case Nos. 08 C 3379,*fn1 09 C 4530, and 12 C 3229 before this court, plaintiff Fujitsu Limited alleged that defendants Tellabs, Inc., Tellabs Operations, Inc., and Tellabs North America, Inc. (collectively "Tellabs") infringed six patents owned by Fujitsu Limited.*fn2

At this point in the litigation, two of the original patents-in-suit have been voluntarily dismissed (the '772 Patent (Tellabs) and the '686 Patent (Fujitsu)); two additional patents-in-suit have been deemed invalid on summary judgment (the '006 Patent (Fujitsu) and the '418 Patent (Fujitsu)); and a fifth patent-in-suit was found to be valid, but not infringed, after a nine-day jury trial (the '681 Patent (Fujitsu)). In the two cases that remain pending before this court, 09 C 4530 and 12 C 3229, three Fujitsu patents-the '163 Patent, the '737 Patent, and the '681 Patent (newly-accused products only)-remain at issue.*fn3 Both sides of the litigation have also filed appeals of earlier court rulings in the United States Court of Appeals for the Federal Circuit.

The parties have scheduled a mediation of their ongoing dispute with mediator Allan Sternstein of the Dykema law firm to take place on Sunday, April 14, 2013. Tellabs would like to disclose certain information to its in-house counsel and to its client's "top management" in advance of that mediation, and has filed Tellabs' "Motion for Reclassification and Use of Documents Produced Under the Protective Order" (09 C 4530, Dkt. No. 1069 ("Tellabs' Mot.")) for that purpose.

For the reasons stated below, Tellabs' motion is granted and the court holds that the following "Contested Information" should no longer be considered protected or confidential under the terms of the parties' stipulated amended protective orders or any previous court order in these related cases:

* that Fujitsu Limited has analyzed U.S. Patent Nos. 6,285,480 and 7,103,063;

* that Fujitsu Limited determined that U.S. Patent No. 6,285,480 related to its WDM products such as the FLASHWAVE 7500; and

* that Fujitsu Limited determined that U.S. Patent No. 7,103,063 related to products practicing RPR such as the FLASHWAVE 4500.


The Contested Information is related to Fujitsu Limited's 2006 inspection of a Tellabs optical scanner and Tellabs' associated product manuals, including three optical amplifier modules. The results of Fujitsu Limited's 2006 inspection are set forth in a series of reports that were issued in draft and final form to various Fujitsu Limited executives in January 2007 under the heading "Confidential & Privileged." (See Tellabs' Mot., Exs. A-F (collectively the "2007 Reports") (filed under seal).) Also set forth in the 2007 Reports is the Contested Information, which Fujitsu Limited describes as "Fujitsu's highly sensitive analysis of its own products which, legitimately or not, may be targeted by Tellabs." (Dkt. No. 1079 ("Fujitsu's Resp.") at 13.) Although Tellabs' initial motion sought to reclassify the 2007 Reports in their entirety, in its reply brief Tellabs seeks only to disclose the Contested Information to Tellabs' inside counsel and senior management. Because the history of Fujitsu Limited's production of the 2007 Reports in this litigation is relevant to Tellabs' pending motion, it is recounted below in detail.

On June 28, 2011, Fujitsu Limited first filed a "Motion for Protective Order Relieving It from Responding to Discovery Related to Inspection of Tellabs Equipment." (09 C 4530, Dkt. No. 330.) Magistrate Judge Jeffrey Cole denied Fujitsu Limited's motion on May 1, 2012, ruling that the 2007 Reports were not protected by the work product doctrine and were sufficiently relevant to warrant production by Fujitsu Limited during discovery. (09 C 4530, Dkt. No. 647.) Fujitsu Limited did not file an objection to Magistrate Judge Cole's ruling, but Fujitsu Limited also did not produce the 2007 Reports to Tellabs at that time because it further claimed they were protected by the attorney-client privilege. (See 09 C 4530, Dkt. No. 623 (5/10/12 docket entry).)

On June 4, 2012, Tellabs filed a motion to compel production of the 2007 Reports on the grounds that Fujitsu Limited waived its attorney-client privilege argument by raising the privilege, but not fully addressing it, in Fujitsu Limited's earlier briefing to the court. (09 C 4530, Dkt. No. 644 (sealed); Dkt. No. 674 (public).) Among other issues included in the parties' briefing on Tellabs' motion to compel was the question of whether Fujitsu Limited's expert, Dr. Alan Willner, reviewed a document incorporating the results of the 2006 inspection during the preparation of his expert report. On August 29, 2012, after holding an evidentiary hearing, Magistrate Judge Cole determined that Dr. Willner did review this document, and that Fujitsu Limited therefore could not prevail on its claim of attorney-client privilege. (09 C 4530, Dkt. No. 912; see also Dkt. No. 897.) Magistrate Judge Cole specifically ordered Fujitsu Limited "to immediately produce the documents that comprise Fujitsu's 2006 inspection of the Tellabs modules" and ruled that Tellabs' motion to compel was moot. (09 C 4530, Dkt. No. 912 at 27.) Fujitsu Limited objected to Magistrate Judge Cole's ruling, and this court overruled Fujitsu Limited's objections on September 27, 2012, ordering Fujitsu Limited "to turn over all relevant discovery materials to Tellabs on or before 10/18/12 at noon." (09 C 4530, Dkt. No. 952.)

At a hearing before Magistrate Judge Cole on October 19, 2012, counsel for Tellabs noted that, while the 2007 Reports had been turned over to Tellabs, "a lot of pages of material is [sic] simply redacted." (Tellabs' Mot, Ex. G (10/19/2012 Hr'g Tr.) at 3:20.) Counsel for Fujitsu Limited argued that the redacted sections of the 2007 Reports "deal with matters that don't have anything to do with the inspection." (Id. at 4:11-12.) To get around this impasse, Magistrate Judge Cole ordered non-redacted copies of the 2007 Reports to be "turned over immediately under an attorneys' eyes only protective order" to two of Tellabs' outside counsel-Richard O'Malley, Jr. and James P. Bradley-"not to be shared by anybody, including other members of their team, without further order of the court." (Id. at 11:3-6; 11:19-23.) Magistrate Judge Cole noted that this restricted production would allow counsel for Tellabs the opportunity to determine whether Fujitsu Limited's redactions were "legitimate" or if Tellabs was "going to want to pursue" the full disclosure of the 2007 Reports. ( 12:1-3; 13:13-15.)

Later that same day, on October 19, 2012, counsel for both parties agreed that production of the 2007 Reports would be made to Tellabs under the designation "for outside counsel only," but without further restricting disclosure only to Messrs. O'Malley and Bradley, and informed the court of this agreement. (Dkt. No. 1083 ("Tellabs' Reply"), O'Malley Decl. ¶ 3.) Counsels' agreement was confirmed via email on November 12, 2012. (O'Malley Decl. ¶ 4, O'Malley Ex. A.) Fujitsu Limited thereafter turned over to Tellabs's outside counsel ...

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