Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379 & 09 C 4530, Slip Op. (N.D. Ill. Aug. 29, 2012) (Cole, Mag. J.).
Judge Cole, after an evidentiary hearing, ordered Fujitsu to produce all documents related to an extensive inspection of plaintiff Tellabs’ optical scanner in this patent case. Fujitsu claimed that certain reports related to the inspection were privileged, but Fujitsu’s expert report stated that the expert had reviewed those report. Fujitsu and its expert argued that the expert’s statements about reviewing the reports were erroneous. While the expert had received the reports, he thought they were other documents and put them in a pile without ever reading them. Regardless of whether the expert and counsel remembered the facts correctly, the story was improbable. The Court did not believe that an “eminent” professor who was acutely aware of the need for accuracy could mistakenly misstate what he had reviewed twice. Because the Court held that the expert had considered the reports, any privilege that may have attached to them was waived.
Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379, Slip Op. (N.D. Ill. Jul. 27, 2012) (Holderman, C.J.).
Chief Judge Holderman denied plaintiff Tellabs’ motion for summary judgment of invalidity. As an initial matter, there was a question of fact regarding whether defendant Fujitsu could swear behind Tellabs’ prior art references based upon an alleged reduction to practice. The Court could not determine based upon undisputed facts or as a matter of law whether or when Fujitsu reduced its invention to practice.
Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379 & 09 C 4530, Slip Op. (N.D. Ill. May 1, 2012) (Cole, Mag. J.).
Judge Cole denied defendant and counter-plaintiff Fujitsu’s motion for a protective order prohibiting plaintiff and counter-defendant Tellabs from getting discovery regarding Fujitsu’s inspection of Tellabs’ optical scanner in this patent litigation regarding optical amplifiers. Fujitsu argued that the inspection was conducted by its employees specifically in anticipation of litigation and, therefore, was work product because the employees would not be testifying at trial. The issue before the Court was whether an employee could be “specially employed . . . in anticipation of litigation” pursuant to Fed. R. Civ. P 26(b)(4)(D).
The district courts were split on the answer. The Court noted that had the Rule been intended to expressly exclude a party’s employees, it would likely have required that the individual be “specially retained” instead of “specially employed.” The Advisory Committee Note was also instructive, if not conclusive, in excluding generally employees not “specially employed on the case.” If the Advisory Committee intended to exclude general employees, it could have excluded all general employees in the Note.
Having determined that the Fujitsu employees could be protected by Rule 26(b)(4)(D) as specially employed, the Court turned to the facts of the case. But Fujitsu had not met its burden to show that its analysis was done in anticipation of litigation, for at least the following reasons:
- The evidence showed competition issues, not an expectation or anticipation of litigation at the time of the analysis.
- The “primary motivating purpose” behind the investigation was not litigation, but at least include competitive concerns. The fact that the reasons may have later “morphed” into litigation was not relevant.
The Court also commended both sides and their counsel for rarely presenting discovery disputes to the Court.