MEMORANDUM OPINION AND ORDER
I.
BACKGROUND
This is a patent infringement ease. The patent-in-suit, Murata’s '641 patent, is directed to a modular jack of the kind used in computers and similar electronic devices. The jack has an integrated noise suppression feature designed to reduce the adverse effects of an extraneous electromagnetic field or signal. Murata alleges that Bel Fuse: (1) is making, using, selling, importing and/or offering for sale infringing modular jacks in the United States in violation of 35 U.S.C. § 271(a); and (2) has induced and continues to induce infringement by others in violation of 35 U.S.C. § 271(b). (Second Amended Complaint, 111110, 11). The parties have had a number of time-consuming and, one would assume, costly discovery squabbles, one of which precipitated the protective order Mu-rata now seeks to have vacated. That order, which Magistrate Judge Brown entered on May 25, 2005, precludes Murata from contacting any of Bel Fuse’s customers to discuss this lawsuit, seek information regarding this lawsuit, or take discovery. Murata now argues that circumstances have changed to an extent that warrants the protective order being vacated.
The May 25, 2005 Protective Order
On January 9, 2004, Murata filed its “Second Motion to Compel: Financial Information” which sought, among other things, the names of Bel Fuse’s customers. Murata argued that, because one of Bel Fuse’s defenses was obviousness, evidence of commercial success was relevant. Bel Fuse’s customers, Murata explained, might have information about the reasons for commercial success, such as the invention’s advantages over the prior art. Bel Fuse opposed Murata’s motion, and asked the court to issue a protective order to protect the identity of its customers and prevent Murata from contacting them.
On January 28, 2004, Magistrate Judge Brown granted in part, and denied in part, Murata’s Second Motion to Compel. In so doing, she denied that portion of Murata’s motion relating to customer identity. She also entered and continued Bel Fuse’s motion for protective order and ordered briefing on that matter. She indicated that Murata was free to file a renewed motion with supporting authority for the right to obtain discovery from customers in order to show commercial success.
Murata filed its “Renewed Motion to Compel Bel Fuse Inc. to Produce Documents Identifying Customers” on February 11, 2004, and Bel Fuse filed its “Motion for Protective Order” on February 26, 2004. The parties briefed both matters, and appeared before Magistrate Judge Brown on March 24, 2004. She indicated that they had failed to address several concerns she had, and she ordered them to file supplemental memoranda on their dispute. When the parties complied and returned on April 29th, Magistrate Judge Brown granted Bel Fuse’s motion for a protective order, and denied Murata’s motion to compel. She explained that:
while it is possible that, at a later stage of this litigation Murata may be able to show a reason for being permitted some inquiry among Bel Fuse’s customer [sic], no need has been shown on the present state of the record However, if at a later time in the litigation it becomes apparent that fairness dictates that Murata should be allowed to contact Bel Fuse’s customer [sic], the issue can be revisited then.
(Murata’s Brief in Support of Motion to Vacate, Ex. 10 (April 29, 2004 Transcript)).
Magistrate Judge Brown’s May 25, 2004 Memorandum Opinion and Order stated that “the only remaining purpose for which Mura-ta seeks the identity of Bel Fuse’s customers is to respond to the obviousness defense.” (.Murata’s Brief in Support of Motion to Vacate, Ex. 1, at 3 n. 1). While acknowledging that Murata had cited cases in which commercial success was established by sales and market share information of an alleged infringer, and cases in which commercial success was established by customer testimony, Magistrate Judge Brown pointed out that Murata had not cited “any cases in which the customers of the alleged infringer provided the testimony, or where the alleged infringer, as opposed to the patent owner, was required to turn over the a names of its customers to assist the patent owner in proving commercial success.” (Id., at 9). The court, itself, found no such authority and thus entered an order forbidding Murata to contact any customers of Bel Fuse “for the purpose of discussing this lawsuit, seeking information relating to the issues in this lawsuit or taking discovery in this lawsuit until further order of the court.” (Id. at 12). According to the court, “it [was] conceivable that at a later stage of this litigation Murata may be able to show a valid reason for being permitted some limited discovery from Bel Fuse’s custom-ers____” (Id., at 13). But, at that point, Murata had shown “no need” and the court felt that “the risk of injury to Bel Fuse [was] demonstrated and potentially irreparable.” (Id. at 13).
Bel Fuse indicated that it had no objection to disclosing the identities of its customers under the terms of the “attorney’s-eyes-only” confidentiality order that was entered in this ease on August 25, 2003. (Id., at 5 n. 3). Its real concern, then, is contact between Mura-ta and its customers.
Events Following The Entry Of The Protective Order
Now, Murata argues that later stage of the litigation has arrived, and it seeks to vacate the protective order, arguing that circumstances have changed and fairness does, in fact, dictate that it should be allowed to have discovery of Bel Fuse’s customers. On October 19, 2004, Murata moved to file a Second Amended Complaint which would add a claim for inducement of infringement against Bel Fuse. Bel Fuse chose not to oppose the motion, and it was granted on November 4, 2004. The new claim alleged that:
Bel Fuse Inc., Bel Fuse Ltd., Bel Stewart Ltd., and Bel Connector Inc. have infringed and continue to infringe the '641 Patent under 35 U.S.C. § 271 by inducing others to infringe the '641 Patent.
{Second Amended Complaint, 1111).
Murata contends that the protective order prevents it from taking discovery on this new claim. In fact, during a 30(b)(6) deposition of Bel Fuse, Bel Fuse’s counsel instructed the witness not to answer questions about its customer, Microsoft, citing the protective order. Bel Fuse also claimed not to know what percentage of its product sold outside the United States is ultimately incorporated into end-products imported and sold in the United States. And, Bel Fuse has served subpoenas on certain of Murata’s licensees, which Murata argues is hardly fair given the protective order’s prohibition against Murata doing the same. Finally, Murata claims that Bel Fuse has threatened it with a motion for summary judgment against its inducement claim, and argues that it cannot defend against such a motion without the discovery the protective order prevents. For all these reasons, Murata asks that the protective order be vacated.
There is a superficial allure to the presentation, but not for Bel Fuse, which argues that the mere addition of what it denominates a “boilerplate” inducement of infringement allegation does nothing to change the circumstances that gave rise to the protective order. It also argues that, as a result of the position Murata took in previous patent litigation, it is judicially estopped from maintaining that the information it seeks as relevant. In addition, Bel Fuse submits that the risk of injury to its business outweighs Mura-ta’s need to contact Bel Fuse’s customers. It contends that the protective order should not be lifted because Murata cannot succeed on its inducement claim. Finally, Bel Fuse maintains that neither the fact that it has subpoenaed certain of Murata’s licensees nor the possibility that it may bring a summary judgment motion are sufficient reason to vacate the protective order.
II.
ANALYSIS
A.
Prerequisites To Vacating A Protective Order
The starting point of analysis is the extant protective order. Under Federal Rule of Civil Procedure 26(c), the court can enter a protective orders “for good cause shown” to protect “a party or person from annoyance, embarrassment, oppression or undue burden or expense.” That Magistrate Judge Brown entered the order presumes that Bel Fuse demonstrated that there was good cause to protect it from discovery. Jepson, Inc. v. Makita Elec. Works, Ltd.,
While neither party addresses the question — the more regrettable failure being Murata’s since it hopes to have the order lifted — the threshold question involves the prerequisites to modifying or vacating a protective order.
In Bayer, the court developed a standard — followed by several courts — under which four factors are considered: (1) the nature of the protective order, (2) the foreseeability, at the time of issuance of the order, of the modification requested, (3) the parties’ reliance on the order; and most significantly (4) whether good cause exists for the modification. Id. at 462-63. Murata has ignored these factors in its briefing.
B.
1.
Nature Of The Protective Order
In determining whether to vacate a protective order, courts consider the nature of the order — “that is, its scope and whether it was court imposed or stipulated to by the parties.” Bayer,
Next in this hierarchy is the “blanket” protective order, which permits the parties to protect selected documents that they believe in good faith contain trade secrets and other confidential commercial information. Such orders are routinely agreed to by the parties and approved by the courts in commercial litigation, especially in cases between direct competitors. They are more difficult to modify or vacate when the parties have stipulated to them. Bayer,
The final type of protective order is one that covers a specific kind of identified information. These orders are the most narrowly tailored, are generally the clear product of “good cause,” and so are more difficult to modify or vacate. Bayer, 162 F.R.D. at 465.
2.
Foreseeability
The “foreseeability” factor is not particularly pertinent here. It has been defined as asking “whether the need for modification of the order was foreseeable at the time the parties negotiated the original stipulated protective order.” Bayer,
3.
Reliance
Reliance in this context is defined as “the extent to which a party resisting modification relied on the protective order in affording access to discovered materials.” Bayer,
4.
Good Cause
Murata’s argument in support of good cause to vacate the protective order — although not couched in those terms — is threefold: (1) it has added an inducement of infringement claim; (2) Bel Fuse has served subpoenas on Murata’s customers; and (3) Bel Fuse has threatened to move for summary judgment on Murata’s inducement claim. “Good cause” in this context implies changed circumstances or new situations; a continuing objection to the terms of an order does not constitute good cause to modify or withdraw a protective order. Bayer,
Murata’s contentions regarding Bel Fuse’s subpoenas to its licensees and the threat of a summary judgment motion may be readily dismissed. The addition of the inducement of infringement claim requires more discussion.
The Threat Of Summary Judgment Is Not Good Cause For Vacating The Protective Order
Murata contends that Bel Fuse is unfairly employing the protective order as a weapon by threatening to file a motion for summary judgment on Murata’s inducement claim while Murata is precluded from taking discovery. The filing of a summary judgment motion, however, is not contingent on a party’s ability or inability to take discovery. Under Fed.R.Civ.P. 56(b), a defending party may seek summary judgment at any time, even in the absence of discovery. South Austin Coalition Community Council v. SBC Communications Inc.,
First, since it impossible to forecast events still in the womb of time, it is uncertain whether such a motion will ever be filed. Questionable discovery ought not be allowed upon speculative guesses about events that are uncertain and contingent and that may not occur as anticipated, or indeed, may not occur at all. Viewed from a different perspective, Bel Fuse’s concerns about a possible summary judgment motion are not sufficiently ripe that they should be the determinant of the decision in this case. Compare Lincoln House Inc. v. Dupre,
Accordingly, the “threatened” motion for summary judgment is not a change in circumstances that constitutes good cause for vacating the protective order. Indeed it is not a change at all. However, if such a motion were actually filed, it could well tip the balance in favor of lifting the order. See Corley v. Rosewood Care Center, Inc.,
b.
Bel Fuse’s Subpoenas To Murata’s Licensees And Potential Licensees Are Not Good Cause For Vacating The Protective Order
On September 28 and September 30, 2005, Bel Fuse issued subpoenas to two of Murata’s current licensees — Samtec and Foxconn — and three potential licensees — Molex, Pulse, and Kycon. Bel Fuse explains that it was its understanding that Murata intended to use evidence of licensing negotiation and license agreements to support its nonobviousness defense as well as its claim for damages, insofar as negotiations and agreements might bear on the calculation of a reasonable royalty. The subpoenas sought information relating to, among other things, discussions with Murata, the patent-in-suit, and any agreements reached with Murata. Murata argues that it is patently unfair that Bel Fuse is allowed to contact Murata’s customers while Murata cannot do the same.
Two distinctions between Bel Fuse’s situation and that of Murata are immediately apparent. Murata never objected to the subpoenas — until now — or moved for a protective order seeking to prevent Bel Fuse from taking the discovery. But those distinctions are merely superficial. More importantly, Bel Fuse has explained — at length — how Mu-rata contacting its customers and seeking discovery on inducement of patent infringement regarding the very device that Bel Fuse supplies those customers with might damage its business relationships. There is a “legitimate concern” about Bel Fuse’s customers being contacted by the owner of a patent and told that the products it is purchasing from a supplier infringe the patent. (Murata’s Brief in Support of Motion to Vacate, Ex. 1, at 11). It is easy to see that customers might turn elsewhere for their needs. Murata has not offered such an explanation of how Bel Fuse’s subpoenas could cause similar damage.
While it would appear that certain of the five companies that discussed licensing the patent-in-suit with Murata might also be Mu-rata’s customers as well as its licensees (Mu-rata’s Brief in Support of Motion to Vacate; at 11-12; Second Decl. of Satoshi Tahara, U11), the products they might purchase as “customers” do not include devices covered by the patent-in-suit. The five companies arguably manufacture such devices, but they do not purchase them from Murata. (Second Decl. of Satoshi Tahara, H11; Exs. A-J). Bel Fuse’s inquiry into the licensing negotiations and/or agreements regarding the patent-in-suit then, would have nothing to do with whatever customer relationship Murata might have with those companies. There is nothing to suggest that these companies would abandon Murata as a source of whatever products they purchase from it. Bel Fuse’s request from these five companies for discovery relating to licensing discussions with Murata is not tantamount to an accusation that these companies are infringing any patents. There is a significant distinction— for these purposes, at least — between a “customer relationship” and a “licensee relationship.”
At bottom, a customer of Murata — the purchaser of its products — stands in a different relationship to Murata than a licensee. It is unlikely that a customer has been gained through hostility — however subtle— but the same cannot always be said of a patent licensee relationship. A patent license might be the product of a threat, however subtle, of a patent infringement suit. This is sufficiently common that an entire area of case law has developed around the question of whether the language in letters offering licenses to putative patent infringers evinces an “actual controversy” for the purposes of the Declaratory Judgment Act. See EMC Corp. v. Norand Corp.,
The Addition Of The Inducement Of Infringement Claim Is Not Good Cause To Vacate The Protective Order: Alternatives Are Available
The central question presented is whether the addition of a claim of inducement of infringement constitutes good cause to vacate the protective order. Under 35 U.S.C. § 271(b), “[wjhoever actively induces infringement of a patent shall be liable as an infringer.”
i.
Murata Has Not Demonstrated Changed Circumstances That Amount To Good Cause To Vacate The Protective Order
In the hopes of vacating the protective order, Murata trumpets the change in circumstances brought about by the addition of its inducement claim. But its argument rings hollow in at least two ways. First, certain significant circumstances have not changed. Bel Fuse’s argument for protection is as valid as it was when it was found to constitute good cause for the protective order in the first place. And, Murata still has been unable to supply case law to support its position that it is entitled to take discovery from Bel Fuse’s customers. In its opening brief, it does not bother. (Murata’s Brief in Support of Motion to Vacate, at 7-10). In its reply brief, it makes the startling claim— belied by its opening brief, the protective order, and the briefs it filed in connection with that proceeding — that it has cited such case law all along. Of course, it did no such thing, and saying it did does not change the reality of what occurred.
In fact, Murata’s reply brief is its first attempt to cite relevant cases. Insituform Technologies, Inc. v. CAT Contracting, Inc.,
In Rexnord — in which the accused infringer was the plaintiff (it brought a declaratory judgment action) — the vice-president of one of the plaintiffs customers testified at trial. There is no indication whose witness he was or whether discovery had even been opposed.
Second, Murata’s own conduct undermines its position that the changes in circumstances are sufficiently significant to require vacating the protective order. In fact, Murata did not even find them consequential enough to merit prompt attention. Recall that Murata added its inducement claim November 5, 2004— over a year before it filed this motion. The change in circumstances that Murata now deems so obviously necessitates lifting the protective order was not even sufficiently noticeable to precipitate a motion until thirteen months had passed. And Murata was aware that Bel Fuse would not be providing it with any of the so-called “crucial information” that it now seeks, as early as February of 2005. (Murata’s Brief in Support of Motion to Vacate, at 5). That was ten months before Murata filed this motion. That is certainly not the manner in which one might be expected to pursue “crucial” information. Murata’s conduct evinced no concern with the constraints of the protective order for about a year after these “significant changes” occurred. Such a period of inactivity indicates that the changes were simply not as significant as Murata now — belatedly-—contends they were.
Murata submits that it has abided by the protective order and “relied on the fact that the Court invited [it] to return when circumstances have changed such that discovery should be permitted.” “That time,” we are told, “has now come.” {Murata’s Brief in Support of Motion to Vacate, at 4). Actually, even if Murata’s characterization of the importance of the changed circumstances were uncritically accepted, it would mean that the time has come and gone. “Good cause” implies changed circumstances or new situations; a continuing objection to the terms of an order does not constitute good cause to modify or withdraw the order. The purported changes in circumstances upon which it relies meant little to Murata. In fact, they are more akin to a mere continuing objection to the terms of an order — an insufficient reason to lift a protective order. Bayer,
ii.
There Are Alternative Discovery Methods That Do Not Violate The Protective Order
Bel Fuse contends that discovery regarding nearly all of the acts Murata posits as evidence of inducement can be obtained as easily from Bel Fuse it as it can from Bel Fuse’s customers. This is a valid point. Investigation into activities such as those dis
Murata does not dispute that such a course is available, but submits that Bel Fuse has been obstructive in discovery thus far. It goes so far as to suggest that Bel Fuse has engaged in spoliation of certain evidence, but stops short, saying it will address this point at the appropriate time. (Murata’s Reply Brief in Support of Motion to Vacate, at 13). So the case is at a point where civility is perhaps gone, but misconduct is not proven. Be that as it may, Bel Fuse will be taken— and held — to its word. In re Sulfuric Acid Antitrust Litigation,
“[Hjonesty and integrity are deemed important traits in the practice of law----” Hirschberg v. CFTC,
Discovery regarding the percentage of product Bel Fuse sells outside the United States that is ultimately incorporated into products imported into and sold in the United States is another matter. Thus far, when prompted by Murata, Bel Fuse has indicated that it is unable to provide such information. (Murata’s Brief in Support of Motion to Vacate, at 5; Ex. 14 (Ackerman Dep. at 138-39); Ex. 15 (Letter of Marvin Raskin, at 2)). Murata served Bel Fuse with a Rule 30(b)(6) deposition notice on February 10, 2005, that listed as a topic, “[t]he volume of ICM products, whether incorporated into finished products or not, imported by parties other than Bel Fuse into the United States.” (Murata’s Brief in Support of Motion to Vacate; Ex. 16). Bel Fuse responded by explaining that “the subject matter is not known to Bel Fuse and preparing a designated witness to testify on the subject matter would require Bel Fuse to gather information from multiple third parties and other sources which would constitute an undue burden.” (Murata’s Brief in Support of Motion to Vacate; Ex. 15, at 2). So the information is available to Bel Fuse, which means it is available to Murata short of contact with Bel Fuse’s customers. As with the previously discussed categories of information, Bel Fuse will have to be the source of the percentages of product sold in the United States.
Again, the protective order does not protect certain information, it only forecloses certain avenues to obtaining that information. It was not grounded on undue burden to Bel Fuse, it was grounded on the acceptance of
CONCLUSION
For the foregoing reasons, the plaintiffs motion to vacate the protective [# 201] order is DENIED. The parties are to proceed with the alternative methods of discovery as directed in this order.
Notes
. See Joy Technologies, Inc. v. Flakt, Inc.,
. Certain of Bel Fuse’s contentions — that Mura-ta's inducement claim consists of inadequately pled "boilerplate” allegations, that the claim cannot succeed, and that judicial estoppel precludes Murata from arguing that it must be allowed to take discovery from Bel Fuse's customers — were addressed at length and rejected in the ruling on Murata's Fifth Motion to Compel and need not be revisited here. (Memorandum Opinion and Order, March 14, 2006 at 17-22).
. Such protective orders — confidentiality orders, really — -fall into yet another category. They involve additional concerns, such as First Amendment issues and the public's legitimate interest in legal proceedings, which are not implicated here. Seattle Times Co. v. Rhinehart,
. Rule 56(f) provides:
Should it appear from the affidavits of a party opposing the motion that he cannot for reasons stated present by affidavit facts essential to justify his opposition, the court may refuse the application for judgment or may order a continuance to permit affidavits to be obtained or depositions to be taken or discovery to be had or may make such other order as is just.
. A defendant can be liable for inducement of infringement for foreign activities that result in infringement in the United States. For example, in MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp.,