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.
Fujitsu Ltd. v. Tellabs Ops., Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Jul. 31, 2012) (Holderman, C.J.).
Judge Holderman granted plaintiff Fujitsu’s motion for summary judgment of no inequitable conduct. The inventors allegedly failed to disclose two prior art references which had been disclosed in prior patent prosecutions, each of which was disclosed during prosecution of the patents in suit. There was a question of fact as to whether each reference was duplicative of other disclosed art and, therefore, was material. But defendant Tellabs did not show the required specific intent – the specific intent “must be the single most reasonable inference able to be drawn from the evidence.” Therasence, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011). In each case, it was reasonable to infer intent to deceive from the undisputed facts. But it was also reasonable to infer that the inventors believed the references were cumulative or that the inventors forgot to include the references. Because multiple inferences could be drawn, there was no intent as a matter of law.
Fujitsu Ltd. v. Tellabs Ops., Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Jul. 27, 2012) (Holderman, C.J.).
Chief Judge Holderman construed an additional claim term – “transmitting” – one month before trial in this patent involving optical transmission systems. “Transmitting” was used as an adjective modifying “terminal,” and as a verb describing what a terminal did. Constructing “transmitting” as an adjective was unnecessary because it was used throughout the patent and one of ordinary skill would have understood the meaning. But “transmitting” was only used as a verb in the claims, warranting construction. “Transmitting” was construed to mean “engaged in the transmission of.” The Court declined to construe terms that were not in the claims to be tried in one month.