Murata Manufacturing Co. v. Bel Fuse, Inc.

234 F.R.D. 175, 2006 U.S. Dist. LEXIS 36852, 2006 WL 687173
District Court, N.D. Illinois·Decided March 15, 2006·No. No. 03 C 2934·Published·Cited by 23 cases

Opinion

MEMORANDUM OPINION AND ORDER

COLE, United States Magistrate Judge.

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.

[177]*177^

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.

[178]*178B.

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.

Free access — add to your briefcase to read the full text and ask questions with AI

Murata Manufacturing Co. v. Bel Fuse, Inc., 234 F.R.D. 175, 2006 U.S. Dist. LEXIS 36852, 2006 WL 687173 (N.D. Ill. 2006).

234 F.R.D. 175 (Murata Manufacturing Co. v. Bel Fuse, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related

Smith v. Burge
N.D. Illinois, 2025
Boudreaux v. St Mary Parish
W.D. Louisiana, 2023
Coburn v. Smith
W.D. Louisiana, 2021
Howe v. Howell
M.D. Tennessee, 2021
Heraeus Kulzer, GmbH v. Biomet, Inc.
881 F.3d 550 (Seventh Circuit, 2018)
Patrick v. City of Chicago
111 F. Supp. 3d 909 (N.D. Illinois, 2015)
Goswami v. Depaul University
8 F. Supp. 3d 1004 (N.D. Illinois, 2014)
Heffernan v. City of Chicago
286 F.R.D. 332 (N.D. Illinois, 2012)
United States v. Bulger
283 F.R.D. 46 (D. Massachusetts, 2012)
United Automobile Insurance Company v. Veluchamy
747 F. Supp. 2d 1021 (N.D. Illinois, 2010)