UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, D.C. 20436
`
`Before the Honorable Charles E. Bullock
`
`Administrative Law Judge
`
`In the Matter of
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`CERTAIN NOISE CANCELING
`HEADPHONES
`
`Inv. No. 337-TA-626
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`AUDIO-TECHNICA U.S. INC.’S MOTION TO AMEND PROTECTIVE ORDER
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`Respondent Audio-Technica U.S., Inc. (“Audio-Technica”), pursuant to the
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`United States International Trade Commission’s (“ITC’s”) Rules of Practice and
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`Procedure, 19 C.F.R. §§ 210.34, hereby moves to amend the Protective Order entered in
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`this case (Order No. 1) so as to include the following language (as set forth in the
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`Proposed Order filed herewith):
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`18. Within 5 business days of the date of this amendment to the Protective
`Order, Complainant shall elect, in writing served upon this Court and all the parties to
`this investigation, to be govemed by one of the following two options:
`
`(a) During the pendency of this investigation and for two years after the full and
`final conclusion of this litigation, including all appeals, Mr. Charles Hieken and
`all other persons who are provided access to Confidential Business Information of
`Audio-Technica covered by this Protective Order will not participate in, direct or
`supervise any patent prosecution activity involving the subject matter of the
`patents in suit or in the field of headphone technology, and will not, at any time,
`directly or indirectly, disclose or discuss such Confidential Business Information
`to or with any member or employee of their firm or other persons engaged in the
`prosecution of patent applications on behalf of Bose involving the subj ect matter
`of the patents in suit or in the field of headphone technology, and an appropriate
`ethical wall shall further be put in place to prevent such disclosure;
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`OI‘
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`(b) Mr. Charles Hieken and all other persons who are involved with any
`prosecution activity involving the subj ect matter of the patents in suit or in the
`field of headphone design, shall not be provided access to the Confidential
`Business Information of Audio-Technica covered by this Protective Order.
`
`The amendment requested herein is required in order to protect Audio-Technica from the
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`inadvertent use or disclosure of its confidential information by persons who are
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`prosecuting patents relating to the technology at issue in this proceeding, which would
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`result in significant harm to Audio-Technica.
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`A memorandum in support of this Motion is filed herewith.
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`RULE 3.2 CERTIFICATION
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`Pursuant to this Court’s Ground Rule No. 3.2, the undersigned counsel hereby
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`certifies that Audio-Technica has made reasonable, good-faith efforts to contact and
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`resolve the matter raised in this motion with Bose at the discovery conference between
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`the parties on February 11, 2008, and Bose declined to agree to a prosecution bar or limit
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`on prosecution counsel’s access to Audio-Technica’s confidential information, claiming
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`that the Protective Order No. 1 adequately prevents the misuse of confidential documents.
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`

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`Dated: February 27, 2008
`
`Respectfillly Submitted,
`
` iL/é/
`MJames P. White
`
`J. Aron Carnahan
`
`A
`
`WELSH & KATZ, LTD.
`120 South Riverside Plaza, 22nd Floor
`Chicago, IL 60606
`Telephone: 312-655-1500
`Facsimile: 312-655-1501
`
`Arthur Wineburg
`Daniel E. Yonan
`
`AKIN GUMP STRAUSS HAUER & FELD LLP
`
`1333 New Hampshire Avenue, NW
`Washington, DC 20036
`Telephone: 202-887-4000
`Facsimile: 202-887-4288
`
`Attorneys for Audi0—Tec/mica U.S.
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, D.C. 20436
`
`Before the Honorable Charles E. Bullock
`
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN NOISE CANCELING
`
`HEADPHONES
`
`Inv. No. 337-TA-626
`
`MEMORANDUM IN SUPPORT OF AUDIO-TECHNICA
`
`U.S. INC.’S MOTION TO AMEND PROTECTIVE ORDER
`
`INTRODUCTION
`
`Respondent Audio-Technica U.S., Inc. (“Audio-Technica”) has moved, pursuant to 19
`
`C.F.R. §§ 210.34, to amend the Protective Order entered in this case (Order No. 1). Mr. Charles
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`Hieken of Fish & Richardson and possibly other persons involved in Bose patent prosecution
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`matters related to the subject matter of this case are or may become signatories to the Protective
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`Order. Given Mr. Hieken’s (and possibly other Fish & Richardson attorneys’) duty to represent
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`Bose regarding these prosecution matters to the fullest extent permissible under PTO Rules and
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`legal ethics, he must chose either to continue that representation and to forego viewing Audio-
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`Technica’s confidential business information (“CB1”) produced in this investigation or Withdraw
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`from all such prosecution matters. Otherwise the risk of inadvertent disclosure of Audio-Tek’s
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`CBI is unacceptably high, as the Audio-Technica CB1 reviewed by Mr. Hieken can infect the
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`advice and decisions he makes regarding the Bose prosecution matters, whether consciously or
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`not, in violation of the Protective Order. Therefore, Audio-Technica moves to preclude Mr.
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`Hieken (and any others involved in the prosecution of Bose patents) from being a signatory to
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`-1-
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`

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`the Protective Order, or in the alternative, impose a prosecution bar upon Mr. Charles Hieken
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`and any other persons involved in the prosecution of Bose patents related to the subject matter of
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`this case who try to become signatories to the Protective Order. A Proposed Order is submitted
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`with this Motion.
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`Mr. Charles Hieken of Fish & Richardson has signed the Court’s Undertaking under
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`Order Number 1 (attached Ex. A), and therefore will have access to all Audio-Technica CBI
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`under the terms of the current Protective Order. Mr. Hieken, however, has been intimately
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`involved with Bose for over forty years in many business and legal capacities. He is an original
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`“organizer” of Bose and has served as its President. Significantly, Mr. Hieken personally
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`prosecuted the two patents at issue in this case, and is currently prosecuting the reissue
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`proceeding of one of the two patents at issue in this case (U.S. Patent 6,597,792).1 The actions
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`taken by Mr. Hieken in prosecuting this reissue proceeding of the ‘792 patent will directly
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`impact the patent claims at issue in this case.
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`Mr. Hieken’s intimate involvement and contacts with Bose make any disclosure of
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`Respondents’ confidential trade secrets, research, and other CB1 extremely detrimental to the
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`interests of Respondents. Any knowledge of Audio-Technica’s CB1 gained by Mr. Hieken and
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`any persons similarly situated, whether intended or not, may inevitably be used in prosecuting
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`Bose’s patent applications. Recognizing the inherent conflict and concomitant risk of
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`inadvertent disclosure, the ITC and other Federal Courts have regularly precluded patent
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`prosecution attorneys from viewing an opposing party’s CB1, or in the alternative have imposed
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`prosecution bars upon such patent prosecution attomeys who have access to an opposing party’s
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`CBI.
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`BACKGROUND FACTS
`
`1 The reissue proceeding involving US Patent 6.597,792 is assigned serial number 10/754,094.
`-2-
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`

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`This is an action pursuant to Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) as
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`amended, in which Complainant Bose Corporation (“Bose”) seeks, among other things, an order
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`precluding the importation and sale of certain noise-cancelling headphones sold by Audio-
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`Technica. Bose contends that the Audio-Technica headphones infringe two patents owned by
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`Bose—U.S. Patent No. 5,181,252, Serial No. 07/782,874 (the “‘252 patent”) and U.S. Patent No.
`
`6,597,792, Serial No. 09/353,425 (the “’792 patent”). As such, Bose has requested discovery in
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`this case which will likely extend to very sensitive and confidential trade secret information
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`relating to Audio-Technica’s research and design of audio technologies. Under the Protective
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`Order that was entered on January 4, 2008, any CBI produced by Audio-Technica in this case
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`can be viewed by “outside counsel for parties to this investigation .
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`. ..” (Protective Order par.
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`3(i).) It is the submission of such an Undertaking by Mr. Charles Hieken, a partner in the Boston
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`office of Fish & Richardson, P.C., that is the subject of this motion.
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`Mr. Hieken’s Involvement With Bose
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`Mr. Hieken personally prosecuted the patents in this lawsuit and signed most every
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`prosecution document submitted to the PTO regarding these patents. (See, e.g., attached Ex. B,
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`sample papers bearing Mr. Hieken’s signature from the patents at issue).2 Mr. Hieken even
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`conducted interviews with the patent examiner where the technology at issue is discussed in the
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`context of Bose’s claims to inventive subject matter. (See attached Ex. C, summaries of
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`interviews showing Mr. Hieken’s personal participation). Mr. Hieken is also currently involved
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`in prosecuting the reissue proceeding of a patent at issue in this case (U.S. Patent 6,597,792).
`
`Mr. Hieken’s most recent filing in the reissue proceeding was on December 7, 2007 (subsequent
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`to Bose’s submission of its Complaint to the ITC) in which Mr. Hieken submitted new claims,
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`2 The application number of US Patent 6,597,792 is 09/353,425, while the application number of US
`5,181,252 is 07/782,874.
`
`-3-
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`

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`amendments, and argument to the USPTO. (See Attached Ex. D, 12/7/07 submission of papers
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`to PTO by Mr. Hieken). The results of these PTO reissue proceedings will decide the scope of
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`claims this Commission can consider regarding the ‘792 patent at issue in this matter.3
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`Mr. Hieken’s involvement in prosecuting Bose’s patents is not limited to the two patents-
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`at—issue in this matter. In the past year alone, twelve patents issued from the USPTO which Mr.
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`Hieken prosecuted for Bose, including the following:4
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`°
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`'
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`°
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`°
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`°
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`°
`
`U.S. Patent No. 7,319,767, “Line Array Electroacoustical Transducing” issued on
`January 15, 2008 (Serial No. 10/610,466).
`U.S. Patent No. 7,318,230, “Media Player Tray Bezel Compliance Coupling”
`issued on January 8, 2008 (Serial No. 10/860,919).
`U.S. Patent No. D558,735, “Headset” issued on January 1, 2008 (Serial No.
`29/259,496.
`
`U.S. Patent No. D558,184, “Loudspeaker” issued on December 25, 2007 (Serial
`No. 29/251,219).
`U.S. Patent No. 7,305,097, “Controlling Fading and Surrounding Signal Level”
`issued on December 4, 2007 (Serial No. 10/367,251).
`U.S. Patent No. D552,074, “Music System Design” issued on October 2, 2007
`(Serial No. 29/223,541).
`U.S. Patent No. 7,270,472, “Resonant Shaking” issued on September 18, 2007
`(Serial No. 11/063,367).
`U.S. Patent No. 7,269,270, “Standing Wave Reduction” issued on September 11,
`2007 (Serial No. 10/272,705).
`U.S. Patent No. 7,260,235, “Line Electroacoustical Transducing” issued on
`August 21, 2007 (Serial No. 09/688,525).
`U.S. Patent No. 7,206,415, “Automated Sound System Designing” issued on
`April 17, 2007 (Serial No. 10/126,016).
`U.S. Patent No. 7,187,777, “Sound Reproducing System Simulating” issued on
`March 6, 2007 (Serial No. 08/440,073).
`U.S. Patent No. 7,164,773, “Vehicle Electroacoustical Transducing” issued on
`January 16, 2007 (Serial No. 09/757,338).
`
`(See attached Ex. E.)
`
`3 It should be noted that while the reissue application of the ‘792 patent is being prosecuted in the PTO, it
`received a Final Rejection of all claims.
`4 The fact that twelve patents issued within a year suggests that Mr. Hieken’s prosecution docket for Bose
`1S far greater than simply twelve patents, insofar as patents can take a number of years to issue from the
`USPTO and some applications never issue as patents.
`
`-4-
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`

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`In fact, Mr. Hieken functions as more than simply another outside counsel for Bose
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`Corporation. From Bose’s organization more than 40 years ago, Mr. Hieken has had significant
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`responsibilities for securing patents for Bose. Mr. Hieken was an original “organizer” of the
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`Bose Corporation in 1964. (Attached Ex. F.) He then became the President of Bose Corporation
`
`in 1966 and served in that capacity for approximately three years. (Attached Ex. G). Mr.
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`Hieken’s intimate and broad business relationship continues even today. In a pleading filed
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`October 31, 2007 in the Federal District Court for the Northern District of Illinois, a former
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`attorney of Fish & Richardson alleges that Mr. Hieken is “an attorney with significant business
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`relationships with Bose corporation,” and that such business interests fall outside of Fish &
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`Richardson’s representative capacity of Bose (Exhibit H, Counterclaim of Mr. Scott Harris
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`against Fish & Richardson at 1142, Case No. 07cv508l (N.D.Ill. Filed September 10, 2007)).
`
`Base ’s Requestfor CBI
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`As part of its first set of interrogatories and first requests for production of documents,
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`Bose has requested highly sensitive confidential materials from Audio-Technica, including all
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`materials involved with “design, development, structure, function, operation, fabrication,
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`production, manufacturing, assembly, and testing” (Bose Interrogatory No. 3) and documents
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`relating to the “research, design, development, structure, operation, engineering, manufacture,
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`use, testing, or sampling” of the technology at issue (Bose Document Request No. 20). Audio-
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`Technica is a high-technology company that does original research and development in the area
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`of audio products, including audio drivers, acoustics, and related fields. (Dec. of Jackie Green at
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`1] 3, attached Ex. I ). Although Respondent Phitek designed and manufactures the product at
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`issue here, the requests of Bose potentially implicate Audio-Technica’s trade secret and
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`proprietary research into audio design and technologies associated therewith, the type of
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`

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`information from which patentable ideas of Audio—Technica arise and for which protection from
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`competitor’s knowledge is paramount.
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`(Id. at 1H[’s 4-5.)
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`Due to the highly confidential nature of the subj ect matter of this case, Audio—Technica
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`seeks an order amending the Protective Order so as to impose a restriction to access or
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`alternatively a prosecution bar on Mr. Hieken and any similarly-situated persons, as set forth in
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`the proposed Order filed herewith. Allowing an interested, non-independent individual that is
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`engaged in patent prosecution for technology and products in competition with Audio—Technica
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`access to sensitive documents of Audio—Technica would be unprecedented and extremely
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`harmful to Audio—Technica because of the high risk that such individual could inadvertently
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`disclose the CBI or use the information to Audio-Technica’s detriment.
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`ARGUMENT
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`I. A PROSECUTION BAR SHOULD BE IMPOSED FOR MR. HIEKEN AND SIMILARLY-
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`SITUATED INDIVIDUALS
`
`19 C.F.R. § 210.34 states that upon motion by a party, and for good cause shown, “the
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`administrative law judge may make any order that may appear necessary and appropriate .
`
`.
`
`. that
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`justice requires to protect a party .
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`.
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`. from annoyance, embarrassment, oppression, or undue
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`burden or expense, including .
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`.
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`. (7) that a trade secret or other confidential research,
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`development, or commercial information not be disclosed or be disclosed only in a designated
`37
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`way .
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`.
`
`..
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`In US. Steel Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984), the Federal Circuit
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`set forth the standards for determining whether to bar or condition access to confidential
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`materials by opposing counsel when there is a danger of inadvertent disclosure of the CBI. The
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`court noted that “factual circumstances surrounding each individual counsel’s activities,
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`association, and relationship with a party .
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`.
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`. must govern any concern for inadvertent or
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`accidental disclosure.” Id. at 1468. The inquiry into those “factual circumstances” centers on
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`-5-
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`

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`whether counsel is engaged in “competitive decisionmaking,” which is defined as “counsel’s
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`activities, association, and relationship with a client that are such as to involve counsel’s advice
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`and participation in any or all of the client’s decisions (pricing, product design, etc.) made in
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`light of similar or corresponding information about a competitor.” Ia’. p. 1468 n.3. In addition,
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`the courts must “balance the risk of inadvertent disclosure of trade secrets to competitors against
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`the risk of impairing the process of litigation by denying access.” Interactive Coupon Mktg.
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`Group, Inc. v. H.O.T.! Coupons, LLC, 1999 U.S. Dist. LEXIS 12437, at *2 (N.D. Ill. Aug. 9,
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`1999); see also Brown Bag Software v. Symantec, 960 F.2d 1465, 1470 (9th Cir. 1992).
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`In other ITC proceedings, prosecution bars have been imposed under similar facts. In
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`Scanning Multiple Beam Equalizing Systems for Chest Radiography and Components Thereof,
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`Inv. No. 337-TA-326, 1991 WL 788616 (Order No. 1) (U.S.I.T.C. March 1991), the respondent
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`in a Section 337 case moved to preclude the complainant’s patent prosecution counsel (Mr.
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`Kavrukov) access to respondent’s CBI. In granting the motion, the judge first noted that “[o]nce
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`Mr. Kavrukov learns any trade secrets of his client’s competitor, he cannot erase them from his
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`mind.” Id. The court continued:
`
`When an attorney prosecuting a patent knows that if he makes a claim broader, it
`will cover a competitor’s trade secret, and he makes the claim broader, it is not
`clear whether he is using confidential information in violation of the protective
`order or he is meeting his obligation to his client to make the claims as broad as
`possible.
`
`Because Mr. Kavrukov was involved in patent prosecution in the PTO that “may well
`
`lead him into an inadvertent use of confidential information that he may obtain if he gets
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`access to information under the Commission’s protective order,” the court granted
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`respondent’s motion so as to give the patent prosecuting attorney a choice as to whether
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`

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`he would represent the complainant in the ITC proceeding or in the patent prosecution
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`proceedings before the PTO:
`
`He can choose to represent the complainant here and get access to confidential
`information in this 337 case, and give up his representation of complainant in the
`PTO in this subject matter area for the period of time suggested by respondents
`[two years] .
`.
`. [o]r he can choose to represent the complainant here without
`getting access to confidential information under the Commission’s protective
`order, and continue to represent the complainant or anyone else in the same
`subject area at the PTO.
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`Id. The same risk of inadvertent disclosure addressed in Scanning Multiple Beam is present in
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`the case at bar. Audio-Technica has been asked to produce documents containing CB1 such as
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`technical drawings, testing considerations involved in headphone technology, and other
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`documents that may implicate Audio-Technica’s underlying research into headphone design and
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`technology.5 As explained in the attached Declaration of Jackie Green, Audio-Technica keeps
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`and has kept this information and material strictly secret. (Id. at 1] 4, Ex. I). If such information is
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`disclosed, it would cause Audio-Technica to lose its competitive advantage, and if these product
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`details were revealed to those like Mr. Hieken with close ties to competitors, the products at
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`issue could be copied and patent claims could be directed to Audio-Technica’s own products.
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`The patents and technology at issue relate to noise-cancelling headphones. As described
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`above, Mr. Hieken has prosecuted patents related to this technology and is currently working on
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`a re-issue patent directed to the very technology at issue in this suit. The potential for a patent
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`attorney prosecuting this application to incorporate claims being guided by Audio-Technica’s
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`CB1 should preclude such individuals from gaining access to such material in the first place, or
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`in the alternative, impose a prosecution bar upon Mr. Hieken (and others involved in Bose’s
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`patent prosecution). Mr. Hieken’s current activity and the likelihood that he will undertake
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`patent prosecution work in the future in this area creates an unacceptable risk, indeed a certainty,
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`5 Audio-Technica reserves its rights to object to the relevance of specific Bose requests.
`-3-
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`that the Audio-Technica trade secret information will be misused, either inadvertently disclosed
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`or used as the basis for competitive decision making. Mr. Hieken will be placed in the untenable
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`position of having to examine his every consulting decision to determine whether it would be
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`tainted as a result of his knowledge of the Audio-Technica trade secret information to avoid
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`violating the Protective Order. See In re Papst Licensing GmbH, Patent Lit., No. MDL 1278,
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`2000 WL 554219, at *3 (E.D. La. May 4, 2000). More importantly, Audio-Technica would
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`never know if he failed in this effort and used or disclosed their trade secret information and,
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`therefore, would be powerless to seek redress from the Court for the violation.
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`Accordingly, Audio-Technica seeks the same Protective Order provisions in this
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`case that were ordered by the court in Scanning Multiple Beam. Mr. Hieken should be
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`ordered to choose between (1) representing Bose in this case with access to Audio-
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`Technica’s CBI and having a prosecution bar imposed upon him, or (2) representing Bose
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`in this investigation without gaining access to Audio-Technica’s CBI. (See Proposed
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`Order, attached.)
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`Similar results have obtained in other cases before the ITC. See Certain Set Top
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`Boxes and Components Thereof, Inv. No. 337-TA-454, 2001 WL 531002 (Order No. 6)
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`(U.S.I.T.C. May 2001) (“The case law is well established that a patent attomey, who
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`handles patent prosecution and who knows the confidential information under a
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`protective order relating to certain products of a complainant or a respondent, may not be
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`expected to unlearn that information even when acting in the best of faith.” Court ruled
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`that any outside counsel that had access to confidential information under the protective
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`order should not prosecute any patent applications relating to subject matter of
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`investigation having a priority date of less than one year from the conclusion of the
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`

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`investigation); and Certain GPS Devices and Products Containing Same, Inv. No. 337-
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`TA—602, Order No. 3 (U.S.I.T.C. July 26, 2007) (order amending the Protective Order so
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`that no member of any law firm representing the parties who has reviewed confidential
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`information shall be involved in the prosecution of any patents applications on behalf of
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`complainant or respondent involving the technology at issue in the investigation, and
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`requiring each law firm to put up an “ethical wall” to prevent disclosure of confidential
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`information to persons in the firm involved in patent prosecution).
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`The Court of International Trade, in an analogous case, refused a request to
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`disclose confidential information to a third party where, as in Scanning Multiple Beam,
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`the risk of inadvertent disclosure was too great. In BASF Corp. v. United States, 321
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`F.Supp. 2d 1373 (Ct. Int’l Trade 2004), the defendant moved for leave to show plaintiffs
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`confidential documents to a third party consultant (Dr. Larkin) who worked for the
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`plaintiffs competitor. The CIT denied the motion, because the expert’s knowledge of
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`plaintiffs confidential information could be inadvertently disclosed to plaintiffs
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`competitor and plaintiff could be “commercially harmed” as a result:
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`[T]his Court is concerned with Dr. Larkin acquiring knowledge based upon
`BASF’s confidential information that could be used to assist a BASF competitor
`at BASF’s expense.
`‘It is very difiicultfor the human mind to compartmentalize
`and selectively suppress information once learned, no matter how well-
`intentioned the eflort may be to do so.’”
`
`Id. at 1380, quoting A. Hirsh, Inc. v. United States, ll C.I.T. 208, 657 F. Supp. 1297,
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`1302 (Ct. Int’l Trade 1987) (emphasis added). For the same reason, the Protective Order
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`in this case should be amended to protect Audio-Technica from commercial harm.
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`II.
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`THE OVERWHELMING AUTHORITY IN FEDERAL COURTS SUPPORTS THE
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`IMPOSITION OF A PROSECUTION BAR IN THIS CASE
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`-10-
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`

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`In cases construing Fed.R.Civ.P. 26(c)(7),6 which is the counterpart to 19 C.F.R. §
`
`210.34, courts frequently impose exclusion orders or prosecution bars upon patent prosecution
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`attorneys who desire to have access to the confidential materials of their client’s competitors. In
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`Cummins-Allison Corp. v. Glory Ltd., 2003 U.S. Dist. LEXIS 23653 at *l7-18 (Dec. 31, 2003
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`N.D. III), the defendant in a patent infringement suit moved to modify the protective order so as
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`to preclude plaintiff’ s patent prosecution attorneys (who were also counsel of record) from
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`receiving defendant’s confidential materials relating to patent prosecution or, in the alternative,
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`to impose a prosecution bar upon these individuals throughout the litigation and for a period of
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`one year after its conclusion. The court applied the “competitive decisionmaking” standard
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`announced by the Federal Circuit in US. Steel, and noted that “[a] number of courts have held
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`that the advice by counsel in prosecuting patent applications falls within the scope of
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`‘competitive decisionmaking.”’ Id. at *l7-l8. The court agreed, and determined that plaintiffs’
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`patent prosecution attorneys are in fact involved in “competitive decision-making:”
`
`As this case vividly demonstrates, patent applications are not always fully formed
`and unchanging when they are filed. .
`.
`. Patent applications may be revised in
`order to respond to a number of factors that may arise, such as concerns expressed
`by a PTO examiner — or information about other products that have entered or are
`about to enter the market. We would expect patent prosecution counsel to be
`intimately involved in deciding how to shape the original application, or how to
`later revise it. It is that intimate involvement in the shaping and revision ofpatent
`applications that provides for the risk that patent counsel inadvertently will use
`information obtainedfrom a party in patent litigation in shaping the application. .
`.
`. [T]his is not a criticism of the ethics of any particular attorneys or of the bar in
`general. Rather, it is a recognition of the limits ofhuman beings to completely
`compartmentalize the multiple sources from which they obtain information.
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`Id. at *23 (emphasis added). The court then went on to impose a prosecution bar upon any
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`person who received confidential information in that case, so that such persons “shall not directly
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`or indirectly participate in the prosecution of any patent application relating to the subject matter
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`6 Fed.R.Civ.P. 26(c)(7) has recently been renumbered as Fed.R.Civ.P. 26(c)(l)(G).
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`of the patents-in-suit during the pendency of this suit and for a period of one year after the
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`conclusion of this litigation, including appeals.” Id. at *34-35; see also In re Papst Licensing
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`GmbH, Patent Lit., No. MDL 1278, 2000 WL 554219, at *4 (E.D. La. May 4, 2000)(preparing
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`and prosecuting patent applications are “intensely competitive decision-making activit[ies]” rife
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`with the opportunity for inadvertent disclosure and misuse of confidential information;
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`prosecution bar was imposed.) As explained above, this case presents the same risk of
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`inadvertent disclosure, which should be guarded against by amending the Protective Order as set
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`forth in the Proposed Order submitted herewith.
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`Recognizing this risk of inadvertent disclosure and misuse, courts routinely impose
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`prosecution bars against those involved in patent prosecution activities, or in the alternative deny
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`prosecution counsel’s access to a competitor’s CBI in litigation. See Infosint v. Lundbeck, 2007
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`U.S. Dist. LEXIS 36678, at *l6 (S.D.N.Y. May 16, 2007) (precluding patent prosecution counsel
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`from gaining access to confidential information where “the opportunity for accidental disclosure
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`or subconscious influencing of actions” was “too great”); Andrx Pharm, LLC v.
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`Glaxosmithkline, PLC, 236 F.R.D. 583 (S.D. Fla. 2006) (denying motion to allow plaintiff’s
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`outside patent prosecution counsel to view defendant’s confidential information where counsel
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`prosecuted patents on behalf of plaintiff for twelve years, and his relationship with plaintiff
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`“suggests that he actively participates in competitive decision-making.”); and Commz'ssariatA
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`L ’Energz'e Atomique v. Dell Computer Corp, 2004 U.S. Dist. LEXIS l2782 (D. Del. May 25,
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`2004) (“I think it is appropriate to deny [plaintiff s] patent prosecution attorneys access to the
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`Defendants’ highly confidential information or, if they are permitted to have access to such
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`information, to prevent them from prosecuting patents in the field of LCD technology for one
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`year after the conclusion of this litigation, including appeals.”)7
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`Although Bose claims that the existing Protective Order sufficiently guards against the
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`disclosure of Respondent’s CBI because Mr. Hieken has signed onto the Protective Order, Bose
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`has taken exactly the opposite position when the issue is the confidentiality of its own
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`proprietary information in this matter. Bose objected to permitting a proposed expert witness for
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`respondent Phitek to have access to Bose’s confidential business information until Phitek
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`provided a “list of the companies for which [its] proposed experts perform consulting activities,
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`have performed consulting activities, and plan to perform consulting activities in the next year,
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`along with a brief description of the nature of their activities.” (Ex. J, Feb. 22, 2008 Letter to W.
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`Nash from A. Hwang.) In View of the fact that Bose will not permit its CBI to be viewed by
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`persons who may be doing consulting work for a Bose competitor, Bose should not be heard to
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`7For additional authority supporting Audio-Technica’s Motion to Amend, see Wrigley Jr. Co., v. Cadbury
`Adams U.S.A. LLC, 2005 U.S. Dist. LEXIS 1297 (ND. 111. Jan 21, 2005)(“it is becoming customary to
`keep confidential data in infringement cases from those who prosecute patents;” court imposed patent
`prosecution bar against “any natural person” who received confidential information); Chan v. Intuit, Inc.,
`218 F .R.D. 659 (N.D. Cal. 2003) (“counsel who view confidential information shall be restricted from
`patenting for a party for the pendency of the trial and for two years after its conclusion”); Interactive
`Coupon Mktg. Group, Inc. v. H.0.T.! Coupons, LLC, 1999 U.S. Dist. LEXIS 12437 G\I.D. Ill. Aug. 5,
`1999)(court imposed prosecution bar on plaintiffs’ attorneys who were privy to confidential information
`obtained from defendant during discovery “during the pendency of this case, and for one year after the
`conclusion of this litigation, including appeals”); Motorola, Inc. v. Interdigital Tech. Corp., 1994 U.S.
`Dist. LEXIS 20714 (D. Del. Dec. 19, 1994) (outside counsel who received confidential information were
`precluded from prosecuting any patent applications for the party they represented “relating to the broad
`subject matter of the patents in suit during the pendency of this case and until one year after the
`conclusion of the present litigation, including appeals”); Mikohn Gaming Corp. v. Acres Gaming, Inc.,
`1998 U.S. Dist. LEXIS 22251 (D. Nev. April 15, 1998) (defendant’s patent prosecution counsel was
`denied access to plaintiff s confidential information where potential harm to plaintiff from unauthorized
`disclosure outweighed burden to defendant without assistance of patent prosecution counsel, and where
`defendant had already retained experienced patent counsel involved in the case from its inception); Davis
`v. AT&T Corp., 1998 U.S. Dist. LEXIS 20417 at *8-9 (W.D.N.Y. December 23, 1998)(imposing
`prosecution bar upon plaintiffs’ patent prosecution attomeys during the pendency of the litigation plus
`two years).
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`complain when Audio-Technica seeks to prevent persons closely aligned with Bose from having
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`access to Audio-Technica’s confidential business information.
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`Mr. Hieken’s ability to file new claims (or amend existing claims) in pending patent
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`applications (or file additional applications) directed by his knowledge of the Audio-Technica
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`trade secret technical material “poses an unacceptable opportunity for inadvertent disclosure or
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`misuse.” Papst, 2000 WL 554219, at *4. The risk that Audio-Technica’s own trade secret
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`information will be used as part of Bose’s efforts to obtain patent claims that attempt to cover
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`products or services offered by Audio-Technica is too great to allow Mr. Hieken to be privy to
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`this type of information without imposing a prosecution bar or precluding his access to CBI.8
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`II. THERE Is LITTLE OR No HARM To BOSE IN IMPOSING A PROSECUTION BAR OR
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`DENYING MR. HIEKEN ACCESS To THE AUDIO—TECHNICA TRADE SECRETS
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`In evaluating a Protective Order, courts balance the risk of inadvertent disclosure and
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`harm to the disclosing party against the risk that the protective order will impair the prosecution
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`or defense of the other party’s claims. Brown Bag Software v. Symantec Corp, 960 F.2d 1465,
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`1470 (9th Cir. 1992); In re Papst Licensing, No. MDL