UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, DC
`
`Before the Honorable Charles E. Bullock
`
`IN THE MATTER OF
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`MEMORANDUM IN SUPPORT OF PANASONIC CORPORATION OF
`NORTH AMERICA'S MOTION TO AMEND PROTECTIVE ORDER
`
`On February 27,2008, Respondent Audio-Technica U.S., Inc. ("Audio-Technical') filed a
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`Motion to Amend the Protective Order in this Investigation ("Audio-Technica Motion").
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`Respondent Panasonic Corporation of North America ("PNA") joins in this motion and moves
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`for a further amendment to address the Confidential Business Information produced by any
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`Respondent. PNA sets forth additional facts relating to the protection of PNA's Confidential
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`Business Information herein.
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`Specifically, PNA moves, pursuant to 19 C.F.R. $ 210.34 and this Administrative Law
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`Judge's Ground Rule 3, to amend the Protective Order entered in this Investigation (Order No. 1)
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`so as to prevent any person involved in relevant patent prosecution matters from viewing the
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`Confidential Business Information produced by any Respondent in this matter, or, in the
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`alternative, impose a prosecution bar upon any person involved in the prosecution of any Bose
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`Corp. ("Bose") patent applications related to the subject matter of this case, as set forth in the
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`Proposed Order submitted herewith. Bose has already submitted an Agreement from Mr.
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`Charles Hieken to be bound by the Protective Order. Mr. Hieken has a forty-plus year business
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`relationship with Bose and is deeply involved in patent prosecution matters for Bose, evidencing
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`the need for the requested modification to the Protective Order.
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`Bose has requested discovery from PNA that contains Confidential Business Information
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`that is crucial to PNA's on-going business. For example, in its First Set of Requests for the
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`Production of Documents and Things, Bose requested documents relating to the commercial
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`exploitation of the Accused Product (Request No. 31), marketing forecasts and business plans
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`(Request Nos. 38-39) and the identification of each potential customer, actual customer,
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`purchaser, reseller or distributor of the Accused Product. Under the present Protective Order, Mr.
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`Hieken would have unfettered access to the confidential documents produced by PNA pursuant
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`to these requests.'
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`As described in Audio-Technica's Motion, Mr. Hieken has a significant personal and
`business relationship with Bose (see Audio-Technica Motion, Ex. H) spanning 40 years (see id.
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`at Ex. F). Since Bose is a privately-held corporation, PNA is unable to even determine whether
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`Mr. Hieken holds a significant financial interest in Bose. Given this close and longstanding
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`personal and business relationship with Bose-the
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`full scope of which is not known by PNA-
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`the potential for harm to the competitive position of PNA by Mr. Hieken's access to PNA
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`Confidential Business Information is severe.
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`Bose has also requested documents "pertaining to the development, from conception to
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`commercial release, of each product incorporating Panasonic's noise canceling technology"
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`(Request No. 21). To the extent PNA is required to produce its confidential technical
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`information, Mr. Hieken's access to such information would be detrimental to PNA, because Mr.
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`Hieken could modify the claims currently pending in the reissue application for the '792 Patent,
`' PNA has already made an initial production of documents in response to Bose's
`discovery requests and will continue to produce documents on a rolling basis, per the agreement
`of the Parties.
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`or in other pending Bose patent applications, with knowledge of PNA's confidential information.
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`Whether intentional or inadvertent, Mr. Hieken's knowledge of PNA's confidential business and
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`technical information could give Bose an unwarranted advantage in the marketplace to the
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`detriment of PNA and the other Respondents. See, e.g., US. Steel Corp. v. United States, 730
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`F.2d 1465, 1468 (Fed. Cir. 1984) (stating that where access creates "an unacceptable opportunity
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`for inadvertent disclosure," courts restrict such access); Wrigley Jr. Co., v. Cadbury Adam
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`USA. LLC, No. 04 C 0346, 2005 U.S. Dist. Lexis 1297, at *4 (N.D. Ill. Jan 21, 2005) ("It is
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`becoming customary to keep confidential data in infringement cases from those who prosecute
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`patents.").
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`For the reasons stated herein and in the Memorandum in Support of Audio-Technica's
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`Motion, the Protective Order governing this investigation should be amended so as to impose a
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`prosecution bar on Mr. Hieken and all similarly-situated individuals who view Confidential
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`Business Information, or, in the alternative, to preclude Mr. Hieken and all those working with
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`him on patent prosecution relating to the subject matter of the patents in suit from gaining access
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`to any Confidential Business Information.
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`DATE: February 28,2008
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`Respectfully submitted,
`
`M i e D. Underwood
`ADDUCI, MASTRIANI & SCHAUMBERG, LLP
`1200 Seventeenth Street, NW, Fifth Floor
`Washington, DC 20036
`Telephone: (202) 467-6300
`Facsimile: (202) 466-2006
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`Daniel S. Ebenstein
`Abraham Kasdan
`Joseph M. Casino
`David A. Boag
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 Park Avenue
`New York, NY 100 16
`Telephone: (212) 336-8000
`Facsimile: (212) 336-8001
`
`Counsel for Panasonic Corporation
`of North America
`
`PAN70 1 108
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`4
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`Before the Honorable Charles E. Bullock
`
`IN THE MATTER OF
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`I
`
`Investigation No. 337-TA-626
`
`ORDER NO. -
`AMENDMENT TO PROTECTIVE ORDER
`
`Upon the consideration of Respondent Panasonic Corporation of North America's
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`("PNA's'') Motion to Amend Protective Order, submitted February 28, 2008, and Respondent
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`Audio-Technica U.S., Inc.'s Motion to Amend Protective Order, submitted February 27, 2008, it
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`is hereby
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`ORDERED that Respondents' motions are GRANTED. It is further
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`ORDERED that the Protective Order in this investigation (Order No. 1) is amended as
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`follows:
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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 governed by one of the following two
`options:
`
`During the pendency of this Investigation and for two years
`(a)
`after the full and final conclusion of this Investigation, including
`all appeals, Mr. Charles Hieken, and all other persons who are
`provided access to Confidential Business Information of any
`Respondent 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
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`involving the subject 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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`or
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`(b) Mr. Charles Hieken, and all other persons who are involved
`with any patent prosecution activity involving the subject matter of
`the patents in suit or in the field of headphone design, shall not be
`provided access to the Confidential Business Information of any
`Respondent covered by this Protective Order.
`
`Dated: March -, 2008
`
`CHARLES E. BULLOCK
`Administrative Law Judge
`
`PAN700908
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`2
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the MEMORANDUM IN SUPPORT OF PANASONIC
`CORPORATION OF NORTH AMERICA'S MOTION TO AMEND PROTECTIVE
`ORDER (PUBLIC) was served as indicated, to the parties listed below, this 28th day of
`February 2008:
`
`The Honorable Charles E. Bullock
`ADMINISTRATIVE LAW JUDGE
`U.S. INTERNATIONAL TRADE COMMISSION
`500 E Street, S.W., Room 317
`Washington, DC 20436
`(VIA HAND DELIVERY - 2 copies)
`
`The Honorable Marilyn R. Abbott
`SECRETARY
`U.S. INTERNATIONAL TRADE COMMISSION
`500 E Street, S.W., Room 112A
`Washington, DC 20436
`(VIA HAND DELIVERY - original + 6 copies)
`T. Spence Chubb
`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. INTERNATIONAL TRADE COMMISSION
`500 E Street, S.W., Room 401s
`Washington, DC 20436
`(VIA HAND DELIVERY)
`
`COUNSEL FOR COMPLAINANT BOSE CORPORATION
`Jordan Fowles
`Ruffin B. Cordell
`FISH & RICHARDSON P.C.
`Andrew R. Kopsidas
`717 Main Street, Suite 500
`Jeffrey R. Whieldon
`Dallas, Texas 75201
`FISH & RICHARDSON P.C.
`1425 K Street, N.W., Suite 1100
`(VIA FEDERAL EXPRESS)
`Washington, DC 20005
`(VIA HAND DELIVERY)
`
`COUNSEL FOR RESPONDENTS CREATIVE LABS~
`PHITEK SYSTEMS, GN NETCOM AND LOGITECH, INC.
`William B. Nash
`Dan Chapman
`Mark Fassold
`JACKSON WALKER L.L.P.
`1 12 E. Pecan Street, Suite 2400
`San Antonio, Texas 78205
`(VIA FEDERAL EXPRESS)
`
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`COUNSEL FOR RESPONDENT PHITEK SYSTEMS
`Alan Cope Johnson
`G. Brian Busey
`Cynthia Lopez Beverage
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Avenue, NW
`Washington, DC 20006
`(VIA HAND DELIVERY)
`
`COUNSEL FOR RESPONDENT AUDIO TECHNICA U.S., INC.
`James P. White
`Arthur Wineburg
`Daniel E. Yonan
`Gerald T. Shekleton
`AKIN GUMP STRAUSS HAUER & FELD LLP
`J. Aron Carnahan
`1333 New Hampshire Avenue, N.W.
`WELSH & KATZ, LTD.
`120 South Riverside Plaza, 22"d Floor
`Washington, DC 20036
`Chicago, Illinois 60606
`(VIA HAND DELIVERY)
`(VIA FEDERAL EXPRESS)
`
`*
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`ADDUCI, MASTIPIANI & S~HAUMBERG, L.L.P.
`1200 Seventeenth Street, N.W., Fifth Floor
`Washington, DC 20036
`
`PAN1 00008
`
`2