Tellabs Operations, Inc. v. Fujitsu Limited et al

Filing 544

MEMORANDUM Opinion and Order Signed by the Honorable Jeffrey Cole on 8/29/2012:Mailed notice(jms, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
TELLABS OPERATIONS, INC.

)
)
Plaintiff,
)
)
v.
)
)
FUJITSU LIMITED AND FUJITSU
)
NETWORK COMMUNICATIONS, INC.,
)
)
Defendants.
)
_________________________________________ )
FUJITSU LIMITED,
)
)
Plaintiff,
)
v.
)
)
TELLABS OPERATIONS, INC, ET AL., )
)
Defendants.
)

No. 08 C 3379
No. 09 C 4530

Chief Judge James Holderman
Magistrate Judge Jeffrey Cole

MEMORANDUM OPINION AND ORDER
I.
INTRODUCTION AND FACTUAL BACKGROUND
In 2006, Fujitsu conducted an extensive inspection of a Tellabs optical scanner purchased
on eBay along with confidential manuals that accompanied the scanner.1 Almost from the beginning,
the contents and results of that inspection have been the source of a heated and continuing dispute,
with Tellabs contending that it was entitled to the documents prepared in connection with that

1

It is undisputed that three Tellabs modules were inspected by Fujitsu’s engineers in Japan. The
technical designation for one of them was Metropolitan Impact Amplifier Module (“MIAM”) P/N 81.61232.
See Tellabs’ Brief Regarding Dr. Willner’s Consideration Of Fujitsu’s July 28th Infringement Contentions,
Attachment A, Exhibit 3 [852] (“Tellabs’ Brief”). See also Transcript of evidentiary hearing of August 17,
2012. (Tr. 107-110, 120-123, 131). “Tr.”refers to the transcript of that hearing.

inspection by Fujitsu's engineers, and Fujitsu adamantly resisting production. The somewhat
complicated but singularly important background of the dispute is told in the extensive
Memorandum Opinion and Order of April 1, 2012. [#647]. See Tellabs Operations, Inc. v. Fujitsu
Ltd., 2012 WL 1520333 (N.D.Ill. 2012).
In brief, the Memorandum Opinion concluded that the 2006 inspection was done for
competitive and economic reasons, that Fujitsu was simply responding to its loss to Tellabs of an
extraordinarily lucrative contract from Verizon, and that “the inspection was not in anticipation of
litigation and the primary impetus was commercial not legal.” The opinion also rejected the claim
that there were two separate inspections, one animated by commercial concerns, the other in
anticipation of litigation. The opinion also rejected Fujitsu’s argument that the results of the 2006
inspection were irrelevant because Fujitsu represented that the results and conclusions of the 2006
inspection were outdated, and that it would not make any use of any aspect of the inspection at trial.
Nor would it allow its expert ever to be exposed to those results. See Tellabs Operations, Inc., 2012
WL 1520333, 16-18. These representations, which have been repeated over and over in varying
forms, will, as we shall see, assume significant dimensions in the resolution of the current
controversy.
Fujitsu was ordered to turn over the results of the 2006 inspection, and its motion for a
protective order was denied. Tellabs Operations, Inc., 2012 WL 1520333, 19. Fujitsu informed the
court that while it disagreed with the Opinion, after careful deliberation, it had decided not to file
objections to it with Chief Judge Holderman. [# 623]. Consequently, Fujitsu has waived any
objection it might have had to the Opinion either in the district court or in the Seventh Circuit in the
event of an appeal following the entry of final judgment. See Schur v. L.A. Weight Loss Centers, Inc.,

2

577 F.3d 752, 760 (7th Cir.2009); Egan v. Freedom Bank, 659 F.3d 639, 644 (7th Cir.2011);
DirecTV, Inc. v. Barczewski, 604 F.3d 1004, 1011 (7th Cir.2010); Banco Del Atlantico, S.A. v. Woods
Industries Inc., 519 F.3d 350, 354 (7th Cir.2008).2
Rather than turnover the 2006 inspection assessment of the engineers in Japan, Fujitsu took
the position that those results were protected by the attorney-client privilege and claimed that it had
appropriately raised that argument in its motion for protective order. Tellabs disagreed, contending
that argument had been waived, and the parties briefed the issue. Meanwhile, in March and again in
April 2012, Dr. Alan Willner, Fujitsu’s expert, issued his expert reports on infringement and validity.3
In both those reports, issued one month apart, he explicitly stated that he “reviewed and considered”
Fujitsu’s 2008 infringement contentions – which relied on or incorporated or utilized the 2006
inspection. Fujitsu had represented repeatedly to the court that those contentions would never be
provided to Dr. Willner, and that if they were to be considered by him, production of the 2006
inspection materials would be required.
Tellabs then took the depositions of Dr. Willner and one of the Fujitsu lawyers who
participated in the preparation and review of those sections of the reports listing the materials that
Dr. Willner “reviewed and considered” in formulating his opinions. Tellabs also deposed other of
Fujitsu’s lawyers who had reviewed those reports. Each claimed that it was all a mistake, and that

2

See also Thomas v. Arn, 474 U.S. 140, 147 (1985); Smith v. School Bd. of Orange County, 487 F.3d
1361, 1365 (11th Cir.2007); Zinna v. Cook, 428 Fed.Appx. 838, 841 (10th Cir.2011); Reddick v. White, 456
Fed.Appx. 191, 193–194 (4th Cir.2011); Lee v. Plantation of Louisiana LLC, 454 Fed.Appx. 358, 359 (5th
Cir.2011); Spencer v. Beard, 351 Fed.Appx. 589, 590–91 (3rd Cir.2009);Wells Fargo Bank, N.A. v. Carnago,
2012 WL 1205666, 3 (E.D.Mich.2012)(collecting cases); Muegge v. Heritage Oaks Golf and Country Club,
Inc., 209 Fed.Appx. 936, 939 (11th Cir.2006); Garland v. Malinich, 181 Fed.Appx. 276, 278 (3rd Cir.2006).
3

Dr. Willner is a professor at the University of Southern California, where he teaches electrical
engineering, optical communications. (Tr. 14).

3

Dr. Willner had in fact never even seen the 2008 contentions, although it was conceded that they had
been sent to him in December 2010 following the Markman hearing.
Dr. Willner testified at his deposition that he did not even realize that the contentions had
been sent to him, and that while he had opened the FedEx envelope containing the contentions, he
did not realize what they were and never looked at them. Instead, he said, they were among a several
inch thick stack of documents that he took from the FedEx envelope and placed loosely on his office
floor, where they sat for more than two years unreviewed and unexamined. It was not until quite
recently when one of Fujitsu’s lawyers asked him to search his office to ascertain whether he had the
2008 infringement contentions that he realized they had been on his floor all along. (Tr. 15-19).
Mr. Gino Cheng, the lawyer at Orrick, Harrington & Sutcliffe in California, which is one of
the Firms representing Fujitsu, participated in and oversaw the preparation of the sections of Dr.
Willner’s two expert reports that carefully itemized the materials Dr. Willner certified he “reviewed
and considered” in forming his opinions. He claimed that he had made a mistake in twice including
Fujitsu’s July 2008 contentions in that list, and that Dr. Willner could not have seen those disclosures
since they had never been sent to him for review. (Tr. 80, et seq.).
Tellabs, understandably taken aback, took the position these representations were false and
that Dr. Willner’s unqualified assertions in his expert reports were accurate and that Tellabs was
therefore entitled to the 2006 inspection reports since Fujitsu’s 2008 infringement contentions had
relied on or utilized in some fashion the 2006 inspection. Tellabs then filed an extensive evidentiary
presentation with this court, and Fujitsu responded with affidavits and portions of deposition
transcripts purporting to support its position that the whole thing was an unfortunate mistake. It was
obvious that the matter could not be decided on the conflicting depositions and that an evidentiary

4

hearing was necessary. Cf., Tranzact Technologies Inc. v. 1Worldsite, 406 F3d 851, 855 (7th Cir.
2005); 1SourceUnited States v. Berg , 20 F.3d 304, 311 (7th Cir. 1994).
II.
THE EVIDENCE ADDUCED AT THE HEARING
A.
The Testimony of Dr. Alan Willner
By at least June 2011, if not earlier, Fujitsu had decided that it was imperative that nothing
related to Fujitsu’s 2006 inspection of the Tellabs modules should be conveyed to its expert, Dr.
Willner. Mr. James Brooks, a senior member of the Fujitsu legal team at the Orrick Firm, repeatedly
represented on the record to this court that Dr. Willner would be insulated from the 2008
infringement contentions, and that if he were exposed to them, Tellabs would indeed be entitled to
disclosure of the inspection results. Mr. Brooks’ representations may be found in Tellabs's Brief
Regarding Dr. Willner's Consideration of Fujitsu's July 2008 Infringement Contentions, Attachment
A. [#852]. To isolate Dr. Willner from the 2008 invalidity contentions, Mr. Brooks “gave the
directive [to the three or four younger lawyers working under him on the preparation of Dr. Willner’s
expert reports] to make sure [they] insulated Dr. Willner from the 2008 contentions.” (Testimony of
Gino Cheng, Tr. 165). Indeed, that directive was discussed “multiple times.” (Id.). See also Tellabs’
Brief, Exhibit17 at7 et seq, Brooks deposition testimony).
During his testimony at the hearing, Dr. Willner conceded that the 2008 invalidity contentions
were actually sent to him by Fujitsu in December 2010 following the Markman hearing. However,
he claimed he never actually saw or reviewed them. (Tr. 48-50, 54, 61-63). Instead, believing that
they were his own materials that Fujitsu’s lawyers’ administrative staff had FedEx’d to him so that
he would not have to carry them on the airplane from Chicago to California after the Markman

5

hearing, he merely opened the FedEx package, “took out the things, and dumped it on the floor.” He
said there was no cover letter, and he guessed that he “didn’t even think to look at it.” (Tr. 57). The
materials sat on the floor of his office, where he said they lay unreviewed and undisturbed until a few
months ago, when Mr. Brooks asked him to search his office to see if he had the 2008 contentions.
It was only then that he realized he had them all along. (Tr. 15-19, 54-57, 61-64).
Dr. Willner said that he was “surprised to see that there was a document that had on the front
of it something from Tyler, Texas” that appeared to be what Mr. Brooks had asked him to look for.
But he didn’t even look at it; he just “picked it up with my hand and brought it right to” Fujitsu’s
lawyers in California. (Tr. 19). He said that he didn’t even go past the first page “because at that
point it was clear to me this isn’t something I am even supposed to look at, so I didn’t even bother.”
(Tr. 20). He did not explain why when following the Markman hearing, he got a second FedEx
package, again with no cover letter, that presumably contained the Markman materials he did not
realize that the four or five-inch thick “stack” of papers he had placed on the floor was not what he
mistakenly thought it was. (Tr. 56, 61-62). Nor did he claim he deposited those documents on the
floor with the other materials from the first FedEx package.
Dr. Willner testified that the statements in his reports that he “reviewed and considered” the
July 2008 infringement contentions were simply mistaken. (Tr. 18-22, 29-30, 172). He was sure
that certain other references to materials he had “reviewed and considered” were also mistaken, but
he could not say which ones in fact he had not reviewed. (Tr. 29-33, 47-50). The only ones he was
absolutely certain he had not reviewed were the July 2008 infringement contentions. (Tr. 45). He
admitted reviewing Fujitsu’s 2011 contentions in which he said the July 2008 contentions are referred

6

to. (Tr. 36-37).4 And, significantly, while he said he hadn’t seen and reviewed the 2008 contentions,
he testified that he believed the 2008 contentions were exhibits to his expert reports, although he
wasn’t sure, and he said he didn’t see all the attachments. (Tr. 47-48). Dr. Willner was quite
emphatic that of course he believed that at the time he signed his March and April 2012 reports they
were true and accurate. (Tr. 47).
Dr. Willner had been an expert in two prior cases and had prepared reports in both. Neither
were patent cases, and he understood the need for “even greater care in this case” than in those. (Tr.
24-26). Yet, despite that awareness, and despite the fact that the first sentence of ¶34 of his March
report and ¶ 31 of his April report stated: “I have reviewed and considered Fujitsu’s July 28, 2008
Rule 3-1 disclosures and attached exhibits (e.g., for the ‘163 and ‘737 Patents),” he insisted that his
representations were honest mistakes and that he had not reviewed the 2008 contentions.5 See Fujitsu
Brief, Exhibit 9 at 5; Exhibit 10 at 5 [#852-10, 852-11]).
Ultimately, Dr. Willner claimed that he relied on the “accuracy of the list of documents” that
he had been given by Fujitsu’s lawyers. (Tr. 64). He said that while in his reports he represented that
he had “reviewed had considered” the documents listed in ¶¶ 31 and 24 of his reports, he “really
didn’t know...what [he was] representing [as true] was partially inaccurate....” (Tr. 64). Dr. Willner
attempted to suggest that the sections captioned “Materials considered” were somewhat peripheral,
and that his focus was largely on more “substantive” provisions of the report. (Tr. 33).

But, Dr. Willner testified both at his deposition and at the hearing that he had spent “many
4

See also discussion at Tr. 118-122.

5

It was conceded at the hearing that Fujitsu’s July 28, 2008 Rule 3-1 Disclosures were the July 28,
2008 infringement contentions. (Tr. 82).

7

hours” in his “multiple reviews” of his expert reports to ensure accuracy prior to signing them. (Tr.
39; 37, 43-44; see Tellabs’ Brief, Exhibit 16, at 36) [#852]). In fact, Gino Cheng, Fujitsu’s lawyer
at Orrick, who oversaw the preparation of the reports and the compilation of the materials that went
along with them, testified at his deposition that Dr. Willner reviewed his reports multiple times in
various states of completion (id., Exhibit 18, at 18-19), but never requested any changes to the
sections of his report identifying the materials he considered (id. at 17). Nor did Mr. Cheng, despite
his “multiple” reviews and those of others of his colleagues, including Mr. Brooks. (Tellabs’ Brief,
Ex 17 at16).
Like Dr. Willner, Fujitsu’s brief seeks to minimize the force and importance of Dr. Willner’s
certifications in his reports about what he “reviewed and considered” by noting that the statements
were not under oath – what significance that could have the brief does not say – that only “minimal
time”was spent on reviewing the “Materials considered” sections of the reports, and that more time
was spent on other portions of the reports. This is an unconvincing argument.
First, what “minimal” means in this context is not explained, and unsupported conclusory
statements by lawyers in briefs don’t count. IFC Credit Corp. v. Aliano Brothers General
Contractors, Inc., 437 F.3d 606, 610-611 (7th Cir. 2006); United States ex rel. Feingold v.
AdminaStar Federal, Inc., 324 F.3d 492, 494, 497 (7th Cir. 2003). Second, the fact that more time
may have been spent on other sections of the reports than was spent on the“Materials considered”
sections tells us nothing about how much time was spent on either. Yet, without that quantification
the inference Fujitsu draw is not a reasonable or persuasive one.

Second, Fujitsu’s attempt to minimize the importance of the “Materials considered” sections

8

of Dr. Willner’s expert reports ignores the structure of those reports and of Rule 26(a)(2)(B)(ii).
Since the section of the reports entitled “Materials considered,” appears under the heading “Bases
of Opinions,” the reports, themselves, recognize that the foundation for and validity of Dr. Willner’s
opinions is indeed a function of the materials he reviewed and considered, thereby making
exceedingly unlikely the insouciance suggested by the brief. This structure is faithful to Rule
26(a)(2)(B).
Under that Rule, the section of an expert report that is required to list the materials relied on
plays a critical role providing notice to a party opponent of the underpinning of the expert’s ultimate
conclusion. Subsection (i) of the Rule requires a “complete statement of all opinions the witness will
express and the basis and reasons for them.” Subsection (ii) requires an itemization of “the facts or
data considered by the witness in forming them.” Thus, contrary to Mr. Brooks’ testimony at his
deposition, the “Materials considered” sections of Dr. Willner’s reports cannot be considered
peripheral or insignificant, as Fujitsu has tacitly argued. 6 Subsection (ii) necessarily recognizes that
the value of any opinion, especially an expert opinion, “is proportioned to the sources that sustain it,”
Petrogradsky Mejdunarodny Kommerchesky Bank v. National City Bank, 253 N.Y. 23, 25, 170 N.E.
479, 483 (1930)(Cardozo, J.), and that in turn depends on what an expert reviews and considers. This
rather obvious fact has been emphasized by the Seventh Circuit, see e.g., Huey v. United Parcel
Service, Inc., 165 F.3d 1084, 1087 (7th Cir.1999), and Dr. Willner conceded as much at the hearing.
(Tr. 34).
At bottom, Fujitsu’s contention that the “Materials considered” sections of the two expert

6

Mr. Brooks at his deposition sought to characterize the “Materials considered” sections of the
reports as “boilerplate.” in order to explain why he had not noticed the references to the 2008 contentions.
in the reports. (Tellabs’ Brief, Exhibit 17 at 16).

9

reports were not deemed sufficiently important by Dr. Willner and his several lawyers to have
warranted careful review – thereby resulting in the two mistaken entries in ¶¶ 31 and 34 -- is not
plausible, especially given the skill and experience of the several Fujitsu lawyers who participated
in the multiple reviews of both reports, to say nothing of Dr. Willner’s own reviews.
Where then does all this leave us? Two conclusions are possible: First, Dr. Willner never
reviewed significant parts of his own reports even though he represented that he had. If that is true,
he “cast aside his scholar's mantel and became a shill for [Fujitsu].” Mid-State Fertilizer Co. v.
Exchange National Bank of Chicago, 877 F.2d 1333, 1340 (7th Cir.1989). Second, Dr. Willner
indeed “reviewed and considered” the materials he represented he had, and among them were the
July 2008 contentions. The evidence taken as a whole favors the latter conclusion. Thus, based on
the evidence I heard and the demeanor of Dr. Willner and Mr. Cheng when they testified at the
hearing, I reject the argument that there were two “mistakes” both of which went unnoticed despite
multiple reviews by multiple readers, including Dr. Wilner, Mr. Cheng, and other lawyers at Orrick,
including Mr. Brooks, who admitted at his deposition having read the reports “from start to finish.”
(Tellabs’ Brief, Exhibit 17 at 17).7

7

"The demeanor of a witness `... may satisfy the tribunal not only that the witness' testimony is not
true but that the truth is the opposite of his story; for the denial of one, who has a motive to deny, may be
uttered with such hesitation, discomfort, arrogance or defiance, as to give assurance that he is fabricating, and
that, if he is, there is no alternative but to assume the truth of what he denies.'" NLRB v. Walton Mfg. Co.,
369 U.S. 404, 408 (1962). See also Anderson v. Bessemer City, 470 U.S. 564, 575 (1985).

10

B.
The Testimony of Gino Cheng
Mr. Cheng is the managing associate of Fujitsu’s counsel, Orrick, Harrington & Sutcliffe. He
is a graduate of Yale University where he received his degree in engineering sciences (electrical) and
attended the University of Oxford. He is a graduate of the Cardozo School of Law with an Intellectual
Property Concentration. He said that he and attorney Michael Owens, who is no longer at the Orrick
Firm, were the authors of those portions, among others, of Dr. Willner’s expert reports containing ¶¶34
and 31, and that they chose which materials were to be included in their itemizations. Like Dr.
Willner, he said that the references to the July 28 infringement contentions were in error, but that
Fujitsu’s lawyers could not figure out which lawyer made the drafting mistake. (Tr. 80-82). He said
that he and Owens were involved in a joint effort, and that they reviewed each other’s work. (Tr.
162).8
He said the supposed error in Paragraph 34 of the March 12, 2012 report was simply carried
over into Paragraph 31 of the April. 2012 report. But he never could explain how the reference to the
2008 infringement contentions found their way into the March report in the first place – let alone why
it was the first reference in the paragraph. He characterized the references in the reports to the July
28 infringement contentions as an “oversight.” (Tr. 80). He said that the mistake in ¶34 of the March
12, 2012 report was simply “replicated” in ¶31 of the April 16, 2012 report. But that testimony is only
partly accurate. Mr. Cheng said that while the reference to the 2008 infringement contentions
appeared in both reports, ¶31 of the April report was not identical in all particulars. Quite the
contrary, it had additional cites to materials on which Dr. Willner relied (Tr. 99, 172), thereby showing

8

Mr. Owens did not testify and apparently is no longer with the Firm.

11

that the two paragraphs were not simply copied thoughtlessly and without review.
Mr. Cheng could not explain why in light of the supposed “conscious decision” to “insulate”
and “isolate” Dr. Willner “from the 2008 [infringement] contentions,” Mr. Brooks’ “directive” to that
effect, and the “multiple” reviews of Dr. Willner’s reports by Dr. Willner and Fujitsu’s lawyers,
Messrs. Cheng, Wang, Brooks, Owens and Hivick, how ¶¶34 and 31 would have begun with an
unambiguous reference to the 2008 infringement contentions. (Tr. 164-165, 169, 171).9 And Mr.
Cheng conceded that there were other references in those paragraphs which, in turn, made references
to exhibits which relied on or had information about the forbidden 2008 infringement contentions.
(Tr. 99-101). The depositions of various people at the Orrick Firm submitted by Fujitsu revealed that
some individuals involved in the case are no longer with the Orrick Firm.
The claim that Orrick’s administrative assistants had somehow mistakenly included the 2008
infringement contentions in the materials that had been FedEx’d to Dr. Willner after the December
2010 Markman hearing (Tr. 92) does not begin to explain the supposed “oversight” in including at
all those critical contentions in both of Dr. Willner’s expert reports, which were issued a month apart.
(Tr. 172).
Mr. Cheng’s alternate thesis was that the 2006 inspections could not have been utilized in any
way in the 2008 infringement contentions since, to his knowledge, there was no English translation

9

Mr. Brooks is a jet propulsion engineer, and he and Mr. Wang, are partners at the Orrick Firm (Tr.
168-169). Mr Wang was described by Mr. Cheng as the “most talented attorney I know.” (Tr. 168). It is odd
to say the least, that such talented and presumably punctilious lawyers, profoundly aware of the need to
“insulate” and “isolate” Dr. Willner from the 2008 contentions and who reviewed “multiple times” the expert
reports would have missed the conspicuous reference to the 2008 infringement contentions in ¶¶31 and 34
of the expert reports. Mr. Wang testified at his deposition that he did not believe he reviewed the entire report.
(Wang Dep. Tr. 10). One would have thought that given the importance Mr. Brooks said he attributed to
isolating Dr. Willner from the 2008 contentions, the accuracy of ¶¶ 34 and 31 should have assumed even
greater significance than perhaps it otherwise would have in a case that did not present the same complexities
as did this one.

12

of the whole report of that inspection until 2012. Hence, he argued, the 2008 infringement contentions
could not have utilized the 2006 inspection assessment. (Tr. 175, et seq.). It was essentially the
defense of impossibility. Indeed, Tellabs’ counsel actually argued at the hearing that it really didn’t
matter whether Dr. Willner had seen the 2008 infringement contentions because “the 2008 contentions
did not in any fashion at all incorporate the 2006 inspection.” (Tr. 193).
Mr. Cheng claimed that the lawyers at Orrick never knew anything about the 2006 inspection
when they crafted the 2008 contentions. (Tr. 124). I reject that testimony based on the evidence. In
addition, Mr. Cheng did not arrive on the scene until 2008 and thus would have no knowledge of the
sum of information that the Orrick Firm had received from Fujitsu in 2006, 2007, or 2008 before he
joined the firm, other than what he was told or surmised. And we know nothing about what he was
told, or by whom, or when.
There was no contention made, nor could there have been, that in the period 2006 to 2008,
Orrick’s lawyers were not in touch with Fujitsu’s in-house counsel, Ms. Wright, or Mr. Fuji in Japan,
who was fluent in English, was intimately knowledgeable about the 2006 inspection, and who
conveyed that information to Fujitsu’s in-house counsel. (Tr. 131-132, 134-139, 182-183). It is thus
quite beside the point that it was not until 2012 that a “certified translation” of the entire report was
“commissioned” by the Orrick firm (Tr. 176, 178), since the contents of the report would have been,
and it is a fair inference, were communicated to Fujitsu’s counsel in the United States by various
people intimately involved in the inspection and its aftermath. (Tr. 134-144). Mr. Cheng was newly
arrived on the scene in 2008, and his participation as a member of the Fujitsu team did not ensure he
had knowledge of all that was going on – or at least there was no proof that he had such knowledge,
and neither he nor Mr. Brooks (or anyone else) claimed that he did.

13

There is nothing speculative about inferring that there were communications regarding the
2006 inspection between Ms. Wright. and Mr. Fuji and Orrick’s counsel. It is based upon the
evidence (Tr. 131-144) and the commonly accepted way in which lawyers involved in a group
endeavor function. But even putting this aside, the question that immediately comes to mind is, if the
2008 contentions did not factor in or incorporate the 2006 inspection, as was argued at the hearing,
(Tr. 193), there would have been no need for Mr. Brooks’ repeated representations to the court. But,
“[Mr. Brooks]... must have thought the[y] added something to his case, as why else [did] he ma[k]e
them?” Brown v. Calamos, 664 F.3d 123 (7th Cir. 2011). Compare Schenck v. United States, 249 U.S.
47 (1919)(Holmes, J.)("Of course the [representations] would not have been [made] unless [they] had
been intended to have some effect...."); United States v. Ladish Malting Co., 135 F.2d 484, 490 (7th
Cir. 1998)("The prosecutor must have thought that the instruction mattered; why else so vigorously
oppose Ladish's request for an actual-knowledge instruction").
And if the 2008 contentions did not factor in or incorporate the 2006 inspection, there would
have been no need for Mr. Brooks to have made a “conscious decision” to “insulate” and “isolate” Dr.
Willner from them or to have had “multiple” meetings and discussions with them to ensure
compliance with the “directive” he issued to that effect. (Tr. 165). When Mr. Cheng was asked why,
if the 2006 inspection was unconnected to the 2008 infringement contentions, Mr. Brooks would have
gone to such lengths to insulate Dr. Willner from the 2006 inspection, all he could say was: “I'm not
1 hundred percent sure what his reasoning was – “ (Tr. 164-165).
And, finally, if Fujitsu’s newly emerged theory that the 2006 inspection was not linked to the
2008 infringement contentions, there certainly would have been no need for Fujitsu to have told Dr.
Willner, as he admitted he had been told, that there could be a waiver of any protection that might

14

exist for the 2006 inspection materials if he admitted that he reviewed and considered the 2008
infringement contentions. (Tr. 26). Yet, all this in fact occurred, and it is idle for Fujitsu to now
contend that it has no significance. In sum, Fujitsu’s argument is feckless, and utterly implausible.
Implausibility is a basis for rejection of testimony and evidentiary theories. See, e.g., Anderson v. City
of Bessemer City, N.C., 470 U.S. 564, 575 (1985); Wainwright v. Sykes, 433 U.S. 72 (1977); Pinpoint,
Inc. v. Amazon.Com, Inc., 347 F.Supp.2d 579, 583 (N.D.Ill. 2004)(Posner, J.)(sitting by designation);
Tellabs Operations, Inc., 2012 WL 1520333, 19, n12. (collecting cases).
Tellabs’ cross-examination showed that Mr. Cheng was not testimonially competent within
the meaning of Rule 602 of the Federal Rules of Evidence to testify to what occurred in the three years
prior to the time he joined the Orrick firm in 2008, (Tr. 183), and that the fact that there may not have
been a full English translation of the entire report prior to 2012 was not conclusive, and, standing
alone, did not preclude the use of all or significant parts of the inspection results in formulating the
2008 infringement contentions. There were any number of Fujitsu people in Japan able to translate
relevant portions of the report and transmit them to Tellabs’ in-house counsel, Ms. Wright, or to
Orrick’s lawyers. As Mr. Bradley, Tellabs’ counsel, aptly put it, “it is not a sole document issue.”
(Tr. 187).
Finally, Mr. Cheng testified that the Orrick lawyers had utilized the confidential Tellabs
manuals that came with the modules purchased on eBay and which the Fujitsu engineers in Japan had
used in the 2006 inspection, but they had “started afresh” in drafting the 2008 infringement
contentions. (Tr. 197). When asked why they would have done that, Mr. Van Dyke – who had
stressed that he had no involvement of any kind in connection with the matters involved in the hearing
(Tr. 93) – interrupted the witness, preventing him from answering and offered this: “To protect the

15

privilege perhaps. That sounded flippant. I didn’t mean it to sound flippant. Seemed like a good
idea.” (Tr. 197). Not only had Mr. Van Dyke made himself testimonially incompetent to arrive at this
conclusion, having played, he said, no role in any of what went on in connection with the formulation
or review of the reports, but he was not an appropriate witness under the rule that prohibits lawyers
from simultaneously acting as advocate and witness. United States. v. Morris , 714 F.2d 669, 671 (7th
Cir. 1983). His surmise, therefore, was of no import, and the question of why Orrick lawyers would
start afresh went unanswered.
The claim made by Fujitsu at the hearing that the 2008 contentions were not traceable in any
degree to the 2006 inspection had not been advanced before it was floated at the hearing. Shifting
explanations undermine the credibility and persuasiveness of a position. NLRB v. Dorothy Shamrock
Coal Co., 833 F.2d 1263, 1268 (7th Cir.1987).
C.
The Documentary Evidence
1.
Tellabs also introduced through exhibits attached to its brief a wealth of documentary evidence
to support its contention that Dr. Willner reviewed and considered Fujitsu’s July 2008 infringement
contentions, including claim charts asserting infringement of Fujitsu’s ’737 and ’163 Patents. Those
charts present Fujitsu’s theories of infringement with respect to a Metro Input Amplifier Module
(MIAM). (Tellabs’ Brief Exhibit 1, at 1; Exhibit 2, at 1-2.)(where an exhibit is referred to infra, it is
an exhibit attached to Tellabs’ Brief). Both claim charts refer to a “61232 Metro Input Amplifier
Module (MIAM).” (Exhibit 1, at 2; Exhibit 2, at 3).

In 2006, Fujitsu’s engineers inspected a “Metro Input Amplifier Module,” product number
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“81.61232-SC.” (Exhibit 3 ¶ 3 n.2 ).10 Fujitsu’s claim chart for the ’737 Patent also refers to an optical
supervisory channel module (OSCM) in both the text and the figures. (Exhibit 1, at 25, 28, 32, 52, 5859, 65). In 2006, Fujitsu’s engineers inspected an “Optical Supervisory Module (‘OSCM,’ P/N
81.61230).” (Exhibit 3 ¶ 3 n.2).
Fujitsu’s claim charts for the ’737 and ’163 Patents also cite to “Tellabs 7100 General
Description 76.7100/2 Revision A 9/02.” (Exhibit 1, at 11, 18, 45, 64; Exhibit 2, at 14, 54). Fujitsu
obtained the Tellabs’ manuals when it purchased the Tellabs equipment on eBay, and Mr. Fuji
maintained these highly confidential manuals. (See Exhibit 4, at 51, 98) (Deposition of Hitoshi Fuji).
One of the manuals produced from Mr. Fuji’s computer was the General Description manual for the
Tellabs 7100 Optical Transport System, number 76.7100/2, revision A 9/02. (Exhibit 5 (manual and
concordance data showing custodian Hitoshi Fuji).)
Although Mr. Fuji claimed that the engineers conducting the inspection of the Tellabs
equipment did not have access to this manual (Exhibit 4, at 51), documents produced by Fujitsu belie
this claim. For example, various documents show that the engineers actually reviewed and analyzed
the manual.
On May 17, 2012, Fujitsu produced certain previously withheld documents pursuant to the
Memorandum Opinion and Order of May 10, 2012. Tellabs Operations, Inc., 2012 WL 1520333.
These documents are dated November 2006 and are attributed to Mr. Tabuchi (see, e.g., Exhibit 7, at
FJIL5557082-83 (top right of each page)), one of the three Fujitsu engineers who inspected the Tellabs
equipment purchased on eBay in 2006. (Exhibit 8 ¶ 8). These documents refer repeatedly to the “year

10

Exhibit 3 is a page from Fujitsu’s in-house counsel’s Declaration submitted in support of Fujitsu’s
original motion for protective order that is discussed at length in Tellabs Operations, Inc., 2012 WL 1520333.

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2002 manual (attached to purchased unit).” (See, e.g., Exhibit 7, at FJIL5557083-84).
These documents record information “From manyual [sic] FP1.3 (2002 manual).” (See, e.g.,
Exhibit 7, at FJIL5557082-83 (top left of each page)). This is a reference to Tellabs’ General
Description manual, number 76.7100/2, revision A 9/02. Its copyright date is 2002 (Exhibit 5, title
page), and it is labeled “FP 1.3” at the top of each page from the table of contents onward (Exhibit 5,
page 2-iii et seq.).
At the hearing, Fujitsu sought to evade the force of these documents by having Mr. Cheng
claim that none of this counts because none of it was used, and the Orrick lawyers started afresh. I do
not credit that testimony. At least on the present record, Mr. Cheng’s knowledge of what actually
occurred in the years preceding his arrival is either non-existent or is based on what he was told by
other Orrick lawyers at some unspecified time in the past. Fujitsu’s lawyer made no attempt at the
hearing to have Mr. Cheng explain the basis of his testimony. Thus, I reject it.11
2.
As discussed above, Dr. Willner’s expert reports state that he “reviewed and considered”
Fujitsu’s July 28, 2008 Rule 3-1 Disclosures and attached exhibits (e.g., for the ’163 and ’737
Patents).” (Exhibit 9 ¶ 34 (page 7); Exhibit 10 ¶ 31 (page 7). This statement appears in: (a) the Expert
Report of Dr. Willner Regarding Infringement With Respect to U.S. Patent No. 7,227,681, U.S. Patent
No. 5,521,737, and U.S. Patent No. 5,526,163 (Exhibit 9); and (b) in his expert report Regarding the
Validity of U.S. Patent No. 7,227,681, U.S. Patent No. 5,521,737, and U.S. Patent No. 5,526,163

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As the proponent of the witness and the testimony, it was Fujitsu’s burden to demonstrate
evidentiary reliability. It did not do so. Obviously, I am not forced to accept at face value what Mr. Cheng
or Dr. Willner said, especially under the circumstances. This is not intended as a reflection on Mr. Cheng’s
honesty or integrity, but simply to say that without a better foundation for his testimony, I cannot gauge its
reliability.

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(Exhibit 10).
“Fujitsu’s July 28, 2008 Rule-3-1 Disclosures and attached exhibits (e.g., for the ’163 and ’737
Patents)” refers to the infringement contentions and claim charts Fujitsu served on July 28, 2008
pursuant to Patent Rule 3-1 of the Eastern District of Texas. (Exhibit 11, at 5-6 (P.R. 3- 1(c). Both
reports also list “Fujitsu’s July 28, 2008 Rule 3-1 Disclosures” in the “Non-Exhaustive List of
Documents Considered by Alan E. Willner.” (Exhibit 9A, second page of table; Exhibit 10,
Attachment A, at 2). In addition, exhibits to Dr. Willner’s expert report on infringement make
affirmative statements about the content of Fujitsu’s July 2008 infringement contentions.
For example, exhibit W-8 to Dr. Willner’s expert report on infringement states: “Fujitsu’s ’737
Patent July 2008 Infringement Contentions illustrated an exemplary configuration of Tellabs’ 7100
system using MIAM, OLIM and DOSC modules.” (Exhibit 9B, at 4. The next page of Exhibit W-8
presents figures representing the OLIM and MIAM modules “[i]dentified in 2008 contentions.”
(Exhibit 9B, at 5-6, 8-9). Similarly, Exhibit W-10 to Dr. Willner’s expert report on infringement
states: “Fujitsu’s November 4, [sic: July 28], 2008 Infringement Contentions for the ’163 Patent
illustrated two exemplary configurations of Tellabs’ 7100 system using the MIAM and LOAM-E
modules respectively.” (Exhibit 9C, at 3). The November 4, 2008 infringement contentions present
a series of figures representing modules “[i]dentified in 2008 contentions.” (See, e.g., Exhibit 9C, at
5-11, 13-14). These affirmative statements about the content of Fujitsu’s July 2008 infringement
contentions support Tellabs’ argument that Dr. Willner reviewed and considered the July 2008
infringement contentions just as he represented he did in both of his expert reports.

Finally, Exhibit W-8 to Dr. Willner’s expert report on infringement relies on documents

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originally cited in Fujitsu’s July 2008 infringement contentions. In particular, Exhibit W-8 to that
report cites “Tellabs® 7100 General Description, 76.7100FP33/2, Rev. B, 2/06 (2006).” Fujitsu’s July
2008 infringement contentions cite the same document, having the same document number, revision,
and date: “Tellabs® 7100 General Description, 76.7100FP33/2, Rev. B, 2/06 (2006).” (See, e.g.,
Exhibit 1, at 2). This document was attached as Exhibit B-2 to Fujitsu’s July 2008 infringement
contentions. (Exhibit 1, at 2.) The only difference between the document cited in Exhibit W-8 to Dr.
Willner’s report and the document cited in Fujitsu’s July 2008 infringement contentions are the Bates
numbers. (Compare Exhibit 14 (from Fujitsu’s July 2008 infringement contentions with Fujitsu Bates
numbers) with Exhibit 15 (cited in Exhibit W-8 to Dr. Willner’s expert report with Tellabs’ Bates
numbers)).
3.
The Markman hearing was held from November 30 to December 7, 2010, more than two years
and eight months after Dr. Willner began working on this case (Exhibit 16 at 33). It is Tellabs
contention that “it simply does not make sense that Dr. Willner would never have considered Fujitsu’s
theories of infringement during the course of claim construction, let alone for the entire two years and
eight months that he worked on the case prior to the Markman hearing.” There is a good deal of force
to that argument.
When presented at his deposition with Exhibit W-8 to his expert report on infringement, Dr.
Willner testified that he had reviewed that exhibit for accuracy prior to signing the report. That exhibit
contained multiple references to the July 2008 infringement contentions. (Exhibit 16 at 40-42). Dr.
Willner gave the same testimony when presented with multiple references to Fujitsu’s 2008
infringement contentions in Exhibit W-10 of his expert report. (See Tellabs’ Brief, Exhibit 16 at 43-

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44).
Tellabs’ argument in its brief that given the totality of the evidence, “the existence of numerous
affirmative statements about the content of the July 2008 infringement contentions is simply not
consistent with an accidental or careless error” is compelling.
4.
Other materials that Dr. Willner admitted having “reviewed and considered” incorporate the
same analysis related to the 2006 inspection of the Tellabs’ equipment that was presented in the July
2008 infringement contentions. First, paragraph 34 of Dr. Willner’s expert report on infringement
states that he has “reviewed and considered…Fujitsu’s June 12, 2009 Motion for Leave to Amend the
Disclosure of Asserted Claims and Infringement Contentions Pursuant to P.R. 3-6(b) (Dkt. 89, Case
No.: 1:09-cv-4530) and attached exhibits (e.g., for the ’163 and ’737 Patents).” Fujitsu attached claim
charts to its motion on June 12, 2009, and these claim charts incorporated the same information and
citations related to the 2006 inspection of the Tellabs equipment that were first presented in Fujitsu’s
original July 2008 infringement contentions.
Specifically, the amended 2009 claim charts for the ’737 and ’163 Patents present Fujitsu’s
theories of infringement with respect to a Metro Input Amplifier Module (MIAM). (Exhibit 23, at 1-2;
Exhibit 24, at 1-2). Both claim charts specifically refer to a “61232 Metro Input Amplifier Module
(MIAM).” (Exhibit 23, at 4 (emphasis added); Exhibit 24, at 4 (emphasis added).) Fujitsu’s 2009 claim
chart for the ’737 Patent also makes numerous references to an optical supervisory channel module
(OSCM) in text and figures. (Exhibit 23, at 27, 30, 34, 54, 60-61, 67.) Finally, both charts cite to
“Tellabs 7100 General Description 76.7100/2 Revision A 9/02.” (Exhibit 23, at 13, 20, 47, 66
(emphasis added); Exhibit 24, at 15, 55 (emphasis added).) This analysis relates directly to Fujitsu’s

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2006 inspection of the Tellabs’ equipment. Mr. Cheng’s attempt to say Fujitsu’s counsel in this case
merely started “afresh” and did not use any of the 2006 inspection of the same Tellabs equipment is
not credible, lacks appropriate foundation, and is utterly unconvincing.
5.
Paragraph 34 of Dr. Willner’s expert report on infringement states that he has “reviewed and
considered…Fujitsu’s June 16, 2011 Amended Disclosure of Asserted Claims and Infringement
Contentions and attached exhibits (e.g., for the ’163 and ’737 Patents).” Fujitsu’s June 2011
infringement contentions included claim charts that incorporated the same information and citations
related to the 2006 inspection of the Tellabs’ equipment that were first presented in Fujitsu’s original
July 2008 infringement contentions. In particular, the amended 2009 claim charts for the ’737 and
’163 Patents both present Fujitsu’s theories of infringement with respect to a Metro Input Amplifier
Module (MIAM). (Exhibit 25, at 1-2; Exhibit 26, at 1-2.) Both claim charts specifically refer to a
“61232 Metro Input Amplifier Module (MIAM).” (Exhibit 25, at 4 (emphasis added); Exhibit 26, at
5 (emphasis added).) Fujitsu’s 2009 claim chart for the ’737 Patent also makes numerous references
to an optical supervisory channel module (OSCM) in text and figures. (Exhibit 25, at 25, 28, 32, 52,
58-59, 67.) Finally, both claim charts cite to “Tellabs 7100 General Description 76.7100/2 Revision
A 9/02.” (Exhibit 25, at 13, 19, 44, 66) (emphasis added); (Exhibit 26, at 17, 61) (emphasis added).
This analysis relates directly to Fujitsu’s 2006 inspection of the Tellabs’ equipment.
6.
Paragraph 34 of Dr. Willner’s expert report on infringement states that he “reviewed and
considered…Fujitsu’s October 20, 2011 Motion to Set a Schedule to Serve Final Contentions and in
the Alternative to File Amended Final Infringement Contentions (Dkt. 397, Case No. 1:09-cv-4530)

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and attached exhibits (e.g., for all three optical amplifier patents).” Fujitsu attached copies of all
previous infringement contentions to its motion, including: (a) Fujitsu’s July 2008 infringement
contentions (Case No. 1:09-cv-4530, Dkt. 414); (b) Fujitsu’s June 2009 infringement contentions
attached to Fujitsu’s June 12, 2009 Motion for Leave to Amend the Disclosure of Asserted Claims and
Infringement Contentions Pursuant to P.R. 3-6(b) (Case No. 1:09-cv-4530, Dkt. 399); and (c) Fujitsu’s
June 16, 2011 Amended Disclosure of Asserted Claims and Infringement Contentions (Case No. 1:09cv-4530, Dkt. 400).
7.
Finally, paragraph 34 of Dr. Willner’s expert report on infringement states that he “reviewed
and considered… Fujitsu’s November 16, 2011 Supplement to Its Memorandum of Law in Support
of Its Motion to Set a Schedule to Serve Final Contentions and in the Alternative to File Amended
Final Infringement Contentions (Dkt. 430, Case No. 1:09-cv-04530) and attached exhibits.” Through
this filing, Fujitsu “provide[d] the Court with the additional claim charts that Tellabs requested on
October 27, 2011.” (Case No. 1:09-cv-4530, Dkt. 428, at 1.). “These charts include four redlined
comparisons between the of the [sic] 2008 infringement contentions and the proposed infringement
contentions for the ’418, ’737, ’163, and ’681 patents (Exhs. 24, 25, 26 and 27 respectively).” (Id. at
1)(emphasis added).
CONCLUSION
Based on all of the evidence that is before me, I reject Fujitsu’s claim that Dr. Willner did not
review and consider the very information his two expert reports unqualifiedly avowed that he did. Not
only did the first sentence of ¶¶31 and 34 of his March and April 2012 reports state that he reviewed
and considered the July 2008 infringement contentions – which appeared as the first item in those

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paragraphs – but there were numerous other exhibits that he reviewed that referred to and relied on
those contentions. How the contentions became a part of the materials Dr. Willner considered is
unclear. Their inclusion may well have been the result of a mistake. But included they were, and
there was nothing mistaken about Dr. Willner’s certification that he had “reviewed and considered”
the 2008 infringement contentions.
Dr. Willner and Mr. Cheng may well be certain that their recollection of events is accurate.
But as Justice Holmes famously said, "certitude is not the test of certainty." Holmes, Natural Law, 32
Harv. L.Rev. 40, 41 (1918) – a proposition the Supreme Court has recognized, Winters v. New York,
333 U.S. 507, 536 (1948), as has the Seventh Circuit, especially in the context of the accuracy of
witnesses’ memories. See e.g., United States v. Bartlett, 567 F.3d 901, 906 (7th Cir. 2009)(“‘The basic
problem about testimony from memory is that most of our recollections are not verifiable. The only
warrant for them is our certitude, and certitude is not a reliable test of certainty.’”); Jarad v. Gonzales,
461 F.3d 867, 871 (7th Cir. 2006) (“Memory often plays tricks.... People may remember what they
want to remember, whether it happened or not, and the lack of correlation between the strength and
accuracy of one’s recollection is one of the most important findings of the psychology of memory.”);
Newsome v. McCabe, 319 F.3d 301, 305 (7th Cir.2003)(“‘[T]he mere fact that we remember something
with great confidence is not a powerful warrant for thinking it true.’”).
But apart from any question of memory is the utter improbability of Fujitsu’s story. We are
asked to believe that an eminent professor, keenly aware of the need for accuracy, “mistakenly”
represented in separate reports that in forming his opinions he had “reviewed and considered”
Fujitsu’s 2008 invalidity contentions, when all the while those contentions had been lying on the floor

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of his office, unnoticed and unreviewed for two years.12 We are asked further to believe that even
though the first line of ¶¶34 and 31 of the March and April 2012 reports lists the 2008 infringement
contentions as having been reviewed and considered by Dr. Willner, and even though there was an
overarching directive from Mr. Brooks that Dr. Willner was to be insulated from the 2008
infringement contentions, and even though the expert reports were reviewed multiple times by at least
Dr. Willner and Messrs. Cheng, Wang, Brooks, Owens and Hivick of the Orrick firm, the references
to the 2008 infringement contentions in the first sentence of ¶¶34 and 31 were overlooked.
And if this astonishing series of “coincidences” and “mistakes” were not enough, we are asked
further to believe that even if Dr. Willner had “reviewed and considered” the 2008 contentions and
all of the various exhibits to his reports that referred to and relied on in some fashion those
contentions, it does not matter since the 2008 contentions did not, in any fashion, incorporate the 2006
inspection. (Tr. 193). But if that be so, why then would Mr. Brooks have labored to insulate Dr.
Willner from the 2008 infringement contentions, and why would he have so painstakingly instructed
his team of lawyers at Orrick of the need for that insulation? And finally, if it did not matter whether
Dr. Willner considered the 2008 contentions, why was he recently told by Fujitsu’s lawyers that if he
conceded having reviewed them there could be a waiver of any claim that the 2006 inspection is
privileged. To ask the questions is to answer them. Fujitsu’s position that this was all an inadvertent
error – and a harmless one at that – is not supported by the evidence.
Mistakes are inherent in the human condition. All judges make them, and so do lawyers and
12

Dr. Willner is so attentive to detail that in his curriculum vitae he has 35 separate line items for his
students’ evaluation of him year by year from 1992 through 2010. Each line item follows the same basic
format. For example: “Fall 92: 5.0/5.0, 13 students, all had evaluated.” The only variances are for the number
of students making an evaluation, the year of the evaluations, and the actual evaluation which was done on
a 5.0 system.” So meticulous is Dr. Willner, that he even lists an evaluation done in 1987 while he was a
graduate student at Columbia. [#467-1 at p.14].

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experts. But claims of a series of improbable events can carry a party only so far. Nilssen v. Osram
Sylvania, Inc., 504 F.3d 1223, 1235 (Fed. Cir. 2007). In isolation, perhaps one of what Mr. Cheng
euphemistically called “oversights” might be dismissed as mere coincidence. But, when all the
evidence is considered, the claim of coincidental error is implausible, at best. What the Supreme Court
said long ago in Coggeshall v. United States, 69 U.S. 383 (1865) applies here: “Circumstances
altogether inconclusive, if separately considered, may, by their number and joint operation, especially
when corroborated by moral coincidences, be sufficient to constitute conclusive proof.” Cf.,
Murdaugh Volkswagen, Inc. v. First Nat. Bank of South Carolina, 639 F.2d 1073 (4th Cir.
1981)(“coincidence piled on coincidence can ultimately constitute sufficient evidence to permit” a
fact-finder to conclude that the claim of innocent error is unacceptable); In re Elm St in City of New
York, 246 N.Y. 72 (1927)(Cardozo, J.)(“ If we may not say of such a coincidence that it is literally
impossible, at least we may say that one would be surprising, and several would be marvelous.”).
In sum, based on the testimony adduced at the hearing, the demeanor of the witnesses at the
hearing, and the deposition testimony and the documentary evidence submitted by the parties, I am
unable to accept Fujitsu’s thesis that Dr. Willner did not review and consider the 2008 infringement
contentions, and that even if he did, it is inconsequential. The evidence does not begin to support
Fujitsu’s argument and, it warrants a contrary conclusion. To the extent that this opinion may vary
in any way from comments made or questions asked during the hearing, this Opinion is controlling.
See O’Neill v. AGWI Lines, 74 F.3d 93, 95 (5th Cir. 1995); Harbor Tug & Barge v. Belcher Towing,
733 F.2d 823, 827 n. 3 (11th Cir. 1984).

The bottom line is that Tellabs is entitled to all of the documents generated in connection with

26

the 2006 inspection of Tellabs' three modules and Fujitsu is ordered to immediately produce the
documents that comprise Fujitsu’s 2006 inspection of the Tellabs modules purchased on eBay. This
ruling moots Tellabs’ “Motion to Compel Production of Documents Related to Fujitsu’s 2006
Inspection of Tellabs’ Equipment Because Fujitsu Has Waived its Arguments Regarding AttorneyClient Privilege.” [#674].

DATE: 8/29/12

ENTERED:_____________________________________
UNITED STATES MAGISTRATE JUDGE

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