Fujitsu Network Communications Inc et al v. Tellabs, Inc. et al

Filing 736

Memorandum Opinion and Order. Signed by the Honorable James F. Holderman on 7/23/2012: Mailed notice (am)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
FUJITSU LIMITED,

)
)
Plaintiff,
)
)
v.
)
)
TELLABS OPERATIONS, INC. and
)
TELLABS, INC.,
)
)
Defendants.
)
_________________________________________ )
TELLABS OPERATIONS, INC.
)
)
Plaintiff,
)
)
v.
)
)
FUJITSU LIMITED and FUJITSU
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NETWORK COMMUNICATIONS, INC.,
)
)
Defendants.
)
_________________________________________ )
FUJITSU LIMITED,
)
)
Counter Claimant,
)
)
v.
)
)
TELLABS OPERATIONS, INC.,
)
TELLABS, INC., and TELLABS NORTH
)
AMERICA, INC.,
)
)
Counter Defendants.
)

Nos. 08 C 3379 & 09 C 4530
Consolidated for Discovery

MEMORANDUM OPINION AND ORDER
JAMES F. HOLDERMAN, Chief Judge:
Pending before the court is Tellabs’s “Motion to Strike Portions of Fujitsu’s Expert
Reports and to Preclude Reliance by Fujitsu on Theories, Evidence, or Analyses Precluded

Under the Court’s Order of March 21, 2012.” (Dkt. No. 568.) For the reasons set forth below,
Tellabs’s motion is granted in part and denied in part. Tellabs’s motion is granted as to those
portions of the Willner Infringement Report and the Willner Supplemental Infringement Report
that rely on an analysis of the LIAM-E, LRAM-E, ELRAM-E, SPM-N, DPM, DCM, SPM, or
APM modules for purposes of proving infringement of the ‘681 Patent. To the extent Tellabs’s
motion relates to the ‘737 Patent, the ‘163 Patent, and the ‘418 Patent, Tellabs’s motion is denied
without prejudice at this stage of the litigation. Additionally, Tellabs’s motion is denied as moot
with respect to the portions of the Willner Infringement Report, the Willner Supplemental
Infringement Report, and the Fujitsu Damages Report voluntarily withdrawn by Fujitsu,
including references to the modules excluded in the court’s March 21, 2012 Order, (Dkt. No. 552
at 16 n.10), and references to the doctrine of equivalents. As to the portions of the Willner
Infringement Report and the Willner Supplemental Infringement Report that analyze indirect
infringement, Tellabs’s motion is denied.
These determinations are explained below. Although the court is sensitive to the parties’
concern for confidentiality, an adjudicative determination by a United States District Court must
be explained on the public record, as the court has done here. See Hicklin Engineering L.C. v.
Bartell, 439 F.3d 346, 348 (7th Cir. 2006) (“What happens in the federal courts is presumptively
open to public scrutiny. . . . Any step that withdraws an element of the judicial process from
public view makes the ensuing decision look more like fiat and requires rigorous justification.”).
BACKGROUND
Tellabs’s motion is directed at specific portions of four of Furjitsu’s expert reports:
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“Expert Report of Dr. Alan E. 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.
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5,526,163” (Dkt. Nos. 568-2 to 568-6 FILED UNDER SEAL (“Willner
Infringement Report”))
•

“Supplemental Expert Report of Dr. Alan E. Willner Re: Infringement of the
MIAM Module With Respect to U..S. Patent No. 7,227,681” (Dkt. No. 568-7
FILED UNDER SEAL (“Willner Supplemental Infringement Report”))

•

“Expert Report of John Eaves Regarding Infringement With Respect to U.S.
Patent No. 5,386,418” (Dkt. No. 568-8 FILED UNDER SEAL (“Eaves
Infringement Report Re: ‘418 Patent”))

•

“Expert Report of Christopher J. Bokhart” (Dkt. No. 568-9 FILED UNDER
SEAL (“Fujitsu Damages Report”))

The court assumes familiarity with the court’s March 21, 2012 order, (Dkt. No. 552 (“3/21/12
Order”)), as well as the general history of this patent litigation.
In light of the bifurcation of the issues pending before the court, and the court’s decision
to proceed to trial solely on the ‘681 Patent at this stage of the litigation, the court need not
address Tellabs’s contentions as they pertain to the ‘737 Patent, the ‘163 Patent, or the ‘418
Patent. To the extent Tellabs’s motion addresses these additional patents, Tellabs’s motion is
denied without prejudice and may be renewed at an appropriate point in the litigation.
Additionally, Fujitsu has agreed to withdraw certain portions of the Willner Infringement
Report addressing modules that were specifically identified in this court’s March 21, 2012 Order
denying Fujitsu’s “Motion to Set a Schedule to Serve Final Infringement Contentions and in the
Alternative to File Amended Final Infringement Contentions.” (See 3/21/12 Order at 16, n.10.)
Specifically, Fujitsu has agreed to withdraw, without prejudice, paragraphs 142-48; 260-78; 298;
383-87; 389-90; 392-93; 395-98; 400-01; 403-04; 407-08; 411-14; 416-17; 419-20; 422-669;
674; 678-90; 753; 758-59; 762-67; 769-72; 775-78; 783-86; 791; 799-802; 805-08; 811-14; 81821; 825-28; 833; 899-916; 918; and 935 of the Willner Infringement Report, subject to Fujitsu’s

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proffer to the court. (See Dkt. No. 590 (“Fujitsu’s Resp.”) at 4, n.1.) Fujitsu has also agreed to
voluntarily withdraw without prejudice the contested portions of the Fujitsu Damages Report.
(Id. at 10.) Lastly, Fujitsu has promised that it “will not rely on any references [in Dr. Willner’s
expert reports] to . . . the doctrine of equivalents.” (Fujitsu’s Resp. at 8.) Tellabs’s motion to
strike is therefore moot with respect to these portions of Fujitsu’s expert reports.
ANALYSIS
The remaining contentions raised in Tellabs’s motion can be divided into two separate
arguments.
1.

Modules Not Identified in Fujitsu’s November 4, 2008 Infringement Contentions
First, Tellabs argues that, “[i]n addition to the eleven modules identified . . . [in the

court’s March 21, 2012 order], Dr. Willner’s expert report on infringement also seeks to analyze
infringement of the ‘681 Patent in terms of three other optical amplifier modules (LIAM-E,
LRAM-E, ELRAM-E) and five processor modules (SPM, SPM-N, DPM, APM, and DCM) that
were not identified as allegedly infringing modules anywhere in Fujitsu’s 2008 infringement
contentions regarding the ‘681 Patent.” (Dkt. No. 568 (“Tellabs’s Mot.”) at 3.) According to
Tellabs, “Fujitsu’s 2008 infringement contentions only identified the LOAM-E and MIAM
modules as accused products with respect to the ‘681 Patent” and “[did] not mention a single
processor module.” (Id. at 3-4.)
Fujitsu argues that “the MIAM module and its controller (including the APM, which has
been updated to the SPM (internally named the APM8250))” were “identified and analyzed” in
Fujitsu’s 2008 Infringement Contentions, which were “carefully charted . . . using a combination
of narrative analysis backed by photographs and optical schematics of representative modules

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and extensive excerpts and citations to Tellabs documentation.” (Dkt. No. 590 (“Fujitsu’s
Resp.”) at 4, 6.)1 Specifically, Fujitsu invites the court to consider the 2008 Infringement
Contentions’ reliance on Figure 2-25 from the Tellabs® 7100 Module and Hardware
Description, 76.7100/4, Rev. A, 10/02 (2002) (“Figure 2-25”). (See, e.g., Dkt. No. 590-2 FILED
UNDER SEAL (“Fujitsu’s Modified 2008 Infringement Contentions”) at 13-17.)
It is undisputed that the introduction to Fujitsu’s November 4, 2008 “Infringement Claim
Chart for U.S. Patent 7,227,681” (Dkt. No. 568-10 FILED UNDER SEAL (“2008 Infringement
Contentions”)), states as follows:
Throughout Fujitsu’s [2008 Infringement Contentions] . . . references will be made
to Figures A-G, which are representative of the Accused Instrumentalities: Tellabs®
7100 Optical Transport System (“Tellabs® 7100”) and Tellabs® 7100 Nano Optical
Transport System (“Tellabs® 7100 Nano”). Figures A-G are of at least two types
of Tellabs® 7100: (1) Tellabs® 7100 that include a Line Output Amplifier
Module-Enhanced (“LOAM-E”) manufactured by Avanex®; and (2) Tellabs®
7100 that include a Metro Input Amplifier Module (“MIAM”) manufactured by
RED-C®. Tellabs® 7100 Nano may use similar structures and methods with respect
to the ‘681 Patent.
(2008 Infringement Contentions at 1 (emphasis added).) It is also undisputed that the 2008
Infringement Contentions do not specifically refer to either the APM processor module or the
SPM processor module.
In relation to the ‘681 Patent’s four independent claims (Claim 1, Claim 6, Claim 9, and
Claim 14), the 2008 Infringement Contentions refer to Figure 2-25 for purposes of supporting
Fujitsu’s contention that “an optical gain block in a MIAM included in Tellabs® 7100 has
‘Automatic Gain Control’” [“AGC”], which Fujitsu contends “indicat[es] Tellabs® 7100

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Fujitsu makes no argument with respect to the LIAM-E, LRAM-E, ELRAM-E, SPM-N,
DPM, or DCM modules, as they relate to the ‘681 Patent. (Fujitsu’s Resp. at 6.)
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includes a controller which controls the gain to be approximately constant.” (2008 Infringement
Contentions at 23, 59, 92, 135.) In relation to four dependent claims of the ‘681 Patent (Claim 4,
Claim 8, Claim 12, and Claim 16), the 2008 Infringement Contentions refer to the same Figure
2-25 for purposes of highlighting “a VOA [Variable Optical Attenuator] Driver in a MIAM
included in Tellabs® 7100,” which Fujitsu contends “indicat[es] that an attenuation level of an
attenuator is changed to control the level of the amplified WDM optical signal.” (Id. at 36, 68,
107, 144.) Both the AGC and the VOA Driver are depicted in Figure 2-25’s diagram of an
optical gain block in a MIAM included in Tellabs 7100:

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Fujitsu argues that “[i]t is self-evident from Fig. 2-25, that the VOA Driver interfaces
with the Optical Gain Block, and FPGA and a Serial EEPROM.” (Fujitsu’s Modified 2008
Infringement Contentions at 15). Additionally, Fujitsu argues that “Pages 4-48 and 4-47 of
Tellabs® 7100 Module and Hardware Description, 76.7100/4, Rev. A, 10/02 (2002) contain[ ]
further description of what the VOA driver does and confirm[ ] that the VOA driver receives its
instructions from a CPU (i.e., the APM, the newer version of which is the APM 8250, or SPM).”
(Id. at 16.)
It is not clear to the court that Fujitsu’s analysis of the newly cited materials is correct.2
Even if Fujitsu is correct, however, that the VOA driver receives its instructions from an APM or
SPM module, Fujitsu’s 2008 Infringement Contentions do not specifically refer to either the
APM module or the SPM module, nor do they explicitly rely on the new materials now cited by
Fujitsu in support of its argument. Fujitsu has not identified any portion of Figure 2-25 that
depicts either an APM module or an SPM module, or any other processor module, and Figure 225 was not cited in Fujitsu’s 2008 Infringement Contentions for purposes of depicting or
identifying a processor module.

2

The cited description of the VOA driver states that the VOA driver receives information
“fed by the CPU through the computer interface module (CIM) (CPU interface).” (See Fujitsu’s
Modified 2008 Infringement Contentions at 17.) This description does not specifically refer to
either the APM processor module or the SPM processor module, but instead suggests that the
VOA receives its instructions from the CIM module.
The cited description of the “Serial Peripheral Interface” (“SPI”) does appear to support
Fujitsu’s contention that “the APM uses ‘SPI links’ to communicate with other modules in the
7100 system, including the MIAM as seen in Fig. 2-25,” (Fujhitsu’s Modified 2008 Infringement
Contentions at 17), but Figure 2-25 does not depict any SPI links directly attached to the VOA
Driver. Fujitsu does not cite any expert testimony to assist the court in understanding the newly
cited evidence.
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The question before the court is whether the relevant portions of the Willner
Infringement Report and Willner Supplemental Infringement Report exceed the scope of
Fujitsu’s 2008 Infringement Contentions. This is not a question that can be answered by
referring to the court’s March 21, 2012 Order, which did not address the sufficiency or scope of
Fujitsu’s 2008 Infringement Contentions.
Infringement contentions are generally considered adequate if they “provide fair notice of
the scope of [the plaintiff’s] infringement theory.” Fenner Investments, Ltd. v. Hewlett-Packard
Co., No. 6:08-CV-273, 2010 WL 786606, at *3 (E.D. Tex. Feb. 26, 2010) (Love, M.J.). In other
words, infringement contentions must “set[ ] forth particular theories of infringement with
sufficient specificity to provide defendants[ ] with notice of infringement beyond that which is
provided by the mere language of the patents themselves.” Network Caching Tech., LLC v.
Novell, Inc., No. C-01-2079 VRW, 2003 WL 21699799, at *4 (N.D. Cal. Mar. 21, 2003)
(Walker, J.). “Expert infringement reports may not introduce theories not previously set forth in
infringement contentions.” Fenner Investments, 2010 WL 786606, at *2.
In its 2008 Infringement Contentions, Fujitsu expressly identified “Tellabs® 7100 that
include a Metro Input Amplifier Module (“MIAM”)” as an accused product. (2008 Infringement
Contentions at 1.) Dr. Willner opines, in relevant part, that “Tellabs’ 7100 system with an SPM
(or APM, hereinafter collectively ‘SPM’) and one or more MIAM modules infringes each
asserted claim of Fujitsu’s ‘681 Patent.” (Willner’s Supplemental Infringement Report ¶ 5.)
Fujitsu did not specifically identify either the SPM module or the APM module in its
2008 Infringement Contentions, nor did it identify any other example of an infringing processor
module. At most, the 2008 Infringement Contentions suggest that there is some component of a

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MIAM module included in Tellabs 7100 that changes the attenuation level of the attenuator.
(See 2008 Infringement Contentions at 36, 68, 107, 144 (citing Figure 2-25 “illustrating a VOA
Driver in a MIAM included in Tellabs® 7100” as an example “indicating that an attenuation
level of an attenuator is changed to control the level of the amplified WDM optical signal”).) It
is Fujitsu’s position that Tellabs could have used the “substantive information” included in
Fujitsu’s 2008 Infringement Contentions to ascertain that Fujitsu was claiming infringement
based on the APM and SPM processor modules, as well as the LOAM-E and MIAM optical
amplifier modules. (Id. at 7.) The court disagrees. The focus of the relevant portions of the
2008 Infringement Contentions was on the allegation that the attenuation level of an attenuator
“is changed,” rather that the process by which this change occurs. To the extent Dr. Willner’s
analysis depends on a specific difference between “Tellabs® 7100 that include a Metro Input
Amplifier Module (“MIAM”),” (2008 Infringement Contentions at 1), and “Tellabs’ 7100
system with an SPM (or APM, hereinafter collectively ‘SPM’) and one or more MIAM
modules,” (Willner’s Supplemental Infringement Report ¶ 5), the court finds, based on the
language and substance of the 2008 Infringement Contentions, that Dr. Willner’s expert opinion
has exceeded the scope of Fujitsu’s 2008 Infringement Contentions. In other words, Fujitsu
failed to put Tellabs on notice of its contention that the specific use of an APM module or SPM
module with a MIAM module in Tellabs’s 7100 system results in infringement of the ‘681
Patent. Accordingly, Tellabs’s motion to strike is granted with respect to those portions of the

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Willner Infringement Report and the Willner Supplemental Infringement Report that rely on an
analysis of the SPM or APM modules for purposes of proving infringement.3
2.

Allegedly “New” Theories of Indirect Infringement
Tellabs next argues that the court should strike portions of the Willner Infringement

Report and the Willner Supplemental Infringement Report because they “improperly present[ ]
theories of indirect (contributory and induced) infringement,” contrary to the court’s March 21,
2012 Order denying Fujitsu leave to amend its infringement contentions. (Tellabs’s Mot. at 12.)
In its March 21, 2012 Order, the court stated that it was assuming, with respect to the
optical amplifier patents (including the ‘681 Patent), that Fujitsu’s proposed amended indirect
infringement theories “differ from those presented in Fujitsu’s 2008 infringement contentions,”
while noting “it is difficult for the court to discern what changes Fujitsu is seeking to make to its
. . . indirect infringement theories.” (3/21/12 Order at 17-18.) The court did not address the
nature or scope of the infringement theories as they had been already set forth in Fujitsu’s 2008
Infringement Contentions. Tellabs’s reliance on the court’s March 21, 2012 Order for purposes
of resolving the current dispute is therefore misplaced.
In response to the pending motion, Fujitsu argues that its “Disclosure of Asserted Claims
and Preliminary Infringement Contentions” (Dkt. No. 639-2 FILED UNDER SEAL
(“Disclosure”)),4 “coupled with Fujitsu’s 2008 Infringement Contentions, did provide fair and

3

Tellabs’s motion to strike is also granted with respect to those portions of the Willner
Infringement Report and the Willner Supplemental Infringement Report that rely on an analysis
of the LIAM-E, LRAM-E, ELRAM-E, SPM-N, DPM, or DCM modules, as these portions of
Tellabs’s motion were not contested with respect to the ‘681 Patent.
4

Fujitsu did not include its Disclosure as an exhibit to its response. The court accepts
Tellabs’s representation that Exhibit C to the Supplemental Leftwich Declaration is a true and
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adequate notice of Fujitsu’s indirect infringement allegations.” (Fujitsu’s Resp. at 9-10.) Fujitsu
cites no other portion of the 2008 Infringement Contentions, other than the Disclosure, in support
of its argument.
According to Tellabs, Fujitsu’s Disclosure is “the cover pleading of Fujitsu’s 2008
infringement contentions.” (Dkt. No. 638 (“Tellabs’s Reply”) at 17.) The court therefore
assumes that the Disclosure was served on Tellabs on November 4, 2008, along with the 2008
Infringement Contentions.5 The Disclosure states, in relevant part:
In addition, Fujitsu asserts that Tellabs commits contributory infringement and
induces infringement of the asserted claims by others, including the customers of
Tellabs who purchase, install and/or use the Accused Instrumentalities.
(Disclosure § IV.) Relying on Patent Rule 3-1(b) for the Eastern District of Texas, Tellabs
argues that this “boilerplate” language “[does] not identify any act of Tellabs that would give
rise to liability for a customer’s direct infringement.” (Tellabs’s Reply at 17 (emphasis in
original).)
Of course, Fujitsu’s 2008 Infringement Contentions with respect to the ‘681 Patent were
never subject to the local patent rules for the Eastern District of Texas, as the ‘681 Patent is only
at issue in the Illinois Action. Nor were Fujitsu’s 2008 Infringement Contentions subject to the
then-non-existent Local Patent Rules of the Northern District of Illinois, as the Local Patent
Rules did not come into effect until October 1, 2009—approximately eleven months after
Fujitsu’s 2008 Infringement Contentions were served on Tellabs.

correct copy of Fujitsu’s Disclosure.
5

Fujitsu states that “[t]he exact same text [as the Disclosure in the Texas Action] is also
included in Fujitsu’s Disclosure for the ‘681 filed in Illinois.” (Fujitsu’s Resp. at 9-10.) Tellabs
does not object to this statement.
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Nevertheless, Fujitsu was specifically ordered by the court to serve Tellabs with
infringement contentions. At a minimum, Fujitsu’s 2008 Infringement Contentions were
required to “provide fair notice of the scope of [the plaintiff’s] infringement theory.” Fenner
Investments, 2010 WL 786606, at *3. As noted above, Fujitsu’s “[e]xpert infringement reports
may not introduce theories not previously set forth in infringement contentions.” Fenner
Investments, 2010 WL 786606, at *2.
While not a model of pleading, the court finds that a fair reading of Fujitsu’s Disclosure
makes clear at least Fujitsu’s contention that Tellabs committed contributory infringement and
induced infringement by selling the Accused Instrumentalities to Tellabs’s customers for the
customers’ own use. The court therefore denies Tellabs’s motion to strike “all paragraphs of Dr.
Willner’s expert reports that analyze indirect infringement.” (Tellabs’s Reply at 18.)
CONCLUSION
For the reasons set forth above, Tellabs’s “Motion to Strike Portions of Fujitsu’s Expert
Reports and to Preclude Reliance by Fujitsu on Theories, Evidence, or Analyses Precluded
Under the Court’s Order of March 21, 2012” (Dkt. No. 568) is granted in part and denied in part.
Tellabs’s motion is granted as to those portions of the Willner Infringement Report and the
Willner Supplemental Infringement Report that rely on an analysis of the LIAM-E, LRAM-E,
ELRAM-E, SPM-N, DPM, DCM, SPM, or APM modules for purposes of proving infringement
of the ‘681 Patent. To the extent Tellabs’s motion relates to the ‘737 Patent, the ‘163 Patent, and
the ‘418 Patent, Tellabs’s motion is denied without prejudice at this stage of the litigation.
Additionally, Tellabs’s motion is denied as moot with respect to the portions of the Willner
Infringement Report, the Willner Supplemental Infringement Report, and the Fujitsu Damages

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Report voluntarily withdrawn by Fujitsu, including references to the modules excluded in the
court’s March 21, 2012 Order, (Dkt. No. 552 at 16 n.10), and references to the doctrine of
equivalents. As to the portions of the Willner Infringement Report and the Willner Supplemental
Infringement Report that analyze indirect infringement, Tellabs’s motion is denied.
ENTER:

_______________________________
JAMES F. HOLDERMAN
Chief Judge, United States District Court
Date: July 23, 2012

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