Tellabs Operations, Inc. v. Fujitsu Ltd.
2012 U.S. Dist. LEXIS 60749
N.D. Ill.2012Background
- Fujitsu sued Tellabs in the Eastern District of Texas for patent infringement; Tellabs counter-sued Fujitsu in Illinois; the Texas case was transferred and consolidated with the Illinois case for discovery purposes.
- Fujitsu seeks a protective order to prohibit Tellabs from discovering Fujitsu's 2006 inspection of Tellabs' optical scanner, arguing the inspection was work product protected and conducted by specially employed in-house personnel.
- Fujitsu attached affidavits from Fujitsu entities (Wright and Fuji) asserting the inspection was conducted to assess Fujitsu's enforcement and licensing decisions and to support potential litigation against Tellabs.
- Tellabs challenged the affidavits as inaccurate, incomplete, or hearsay, and highlighted that the engineers who performed the inspection were not disclosed and that the motivations appeared commercial rather than litigation-driven.
- The court analyzed whether in-house employees can be considered 'retained or specially employed' under Rule 26(b)(4)(D) and whether the 2006 inspection was conducted in anticipation of litigation, ultimately finding no good cause for protection because the evidence showed the primary motivation was competitive/commercial rather than imminent litigation.
- The court denied Fujitsu's Motion for Protective Order, concluding that Fujitsu failed to show the necessary 'good cause' under Rule 26(c).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of Rule 26(b)(4)(D) for in-house experts | Fujitsu argues in-house employees can be 'retained or specially employed' under the rule. | Tellabs contends in-house employees are ordinary witnesses unless specially retained externally. | Rule 26(b)(4)(D) may apply to in-house experts, but not dispositive here. |
| Was the 2006 inspection conducted in anticipation of litigation? | Inspection was conducted to determine potential patent infringement and enforce Fujitsu's IP rights. | Inspection was primarily driven by commercial/competitive interests following Verizon's bid for Tellabs equipment. | Proceeding primarily motivated by commercial interests; not in anticipation of litigation. |
| Relevance of the 2006 inspection information to the current case | The information could prove or disprove infringement or copying and thus is relevant. | Information is outdated or irrelevant to the issues, especially given subsequent product changes. | Information is sufficiently relevant to discovery under Rule 26(b)(1). |
Key Cases Cited
- Hickman v. Taylor, 329 U.S. 495 (U.S. (1947)) (origin of the work-product doctrine)
- In re Shell Oil, 132 F.R.D. 437 (E.D. La. 1990) (in-house experts and work product protection split among circuits)
- Virginia Electric & Power Co. v. Sun Shipbuilding, 68 F.R.D. 397 (E.D. Va. 1975) (impartiality vs. loyalty of in-house experts)
- Seiffer v. Topsy’s Int’l., Inc., 69 F.R.D. 69 (D. Kan. 1975) (in-house expert involvement in potential litigation contexts)
- Binks Mfg. Co. v. National Presto Industries, Inc., 709 F.2d 1119 (7th Cir. 1983) (articulating test for whether a document is protected work product)
- Logan v. Commercial Union Ins. Co., 96 F.3d 971 (7th Cir. 1996) (context for the test of whether something was prepared because of the prospect of litigation)
- United States v. Nobles, 422 U.S. 225 (U.S. 1975) (requirements for work product protection and anticipation of litigation)