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 PHITEK SYSTEMS LIMITED’S (NZ)
`MOTION TO AMEND PROTECTIVE ORDER]
`
`INTRODUCTION
`
`This is an action pursuant to Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) as
`
`amended, in which Complainant Bose Corporation (“Bose”) seeks, among other things, an order
`
`precluding
`
`the
`
`importation and sale of certain noise-cancelling headphones designed,
`
`manufactured and/or sold by Respondents. Bose contends that the Phitek headphones infringe
`
`two patents owned by Bose-U.S. Patent No. 5,181,252, Serial No. 07/782,874 (the “’252 patent”)
`
`and US. Patent No. 6,597,792, Serial No. 09/353,425 (the “‘792 patent”).
`
`Bose has requested discovery in this case of the Respondents’ Confidential Business
`Information (“CBI”). Under the Protective Order that was entered on January 4, 2008 (Order
`No. 1), any CBI produced by the Respondents in this case can be viewed by “outside counsel for
`parties to this investigation ....” (Protective Order par. 3(i).) It is the submission of such an
`undertaking by Mr. Charles Hieken, a partner in the Boston office of Fish & Richardson, P.C.
`and Bose’s patent prosecutor, that is the subject of this motion.
`RELIEF SOUGHT
`On February 27, Respondent Audio-Technica U.S., Inc. (“Audio-Techinica”) filed a
`
`Motion to Amend the Protective Order entered in this case (Order No. 1), seeking further
`
`protection of Audio-Technica’s CBI (“Audio-Technica Motion”).
`
` On February 29, 2008,
`
`5041095v.5
`
`

`
`Panasonic Corporation of North America (“Panasonic”) filed a Motion to Amend the Protective
`
`Order, joining in the Audio-Technica Motion, but seeking further protection of CBI produced by
`
`any Respondent (“Panasonic Motion”).
`
`Respondent Phitek Systems Limited (“Phitek”) joins in the Audio-Technica and
`Panasonic Motions and, like Panasonic, moves for further amendment to the Protective Order to
`address the CBI produced by any Respondent because each of the Respondents is in the
`possession of Phitek CBI pursuant to certain confidentiality agreements. (Donaldson Dec. ¶4,
`attached hereto as Ex. A). Specifically, Phitek moves, pursuant to 19 C.F.R. §§ 210.34 and this
`Administrative Law Judge’s (“ALJ”) Ground Rule 3, to amend the Protective Order entered in
`this Investigation (Order No. 1) so as to prevent any person involved in relevant patent
`prosecution matters, including but not limited to Bose’s patent prosecutor Mr. Charles Hieken of
`Fish & Richardson, from viewing the CBI produced by any Respondent in this matter, or in the
`alternative impose a prosecution bar upon any person in the prosecution of any Bose patent
`applications related to the subject matter of this case, as set forth in the Proposed Order
`submitted with Panasonic’s Motion.
`Mr. Charles Hieken of Fish & Richardson has signed the Court’s Undertaking under
`
`Order Number 1 (see Audio-Technica’s Motion, Ex. A), and therefore will have access to all
`
`Respondents’ CBI under the terms of the current Protective Order. However, as more fully
`
`developed in Audio-Technica’s Motion, Mr. Hieken has been intimately involved with Bose for
`
`over forty years in many business and legal capacities, including “organizing” Bose and serving
`
`as its President.
`
`(See Audio-Technica’s Motion, Ex. F, G and H). Significantly, Mr. Hieken
`
`personally prosecuted the two patents at issue in this case (See Audio-Technica’s Motion, Ex. B
`
`and C), and is currently prosecuting the reissue proceeding of one of the two patents at issue in
`
`this case (U.S. Patent 6,597,792).1 (See Audio-Technica’s Motion, Ex. D). The actions taken by
`
`
`
`1 The reissue proceeding involving US Patent 6.597,792 is assigned serial number 10/754,094.
`
`5041095v.5
`
`- 2 -
`
`

`
`Mr. Hieken in prosecuting this reissue proceeding of the ‘792 patent will directly impact the
`
`patent claims at issue in this case. Mr. Hieken’s most recent filing in the reissue proceeding was
`
`on December 7, 2007 (subsequent to Bose’s submission of its Complaint to the ITC) in which
`
`Mr. Hieken submitted new claims, amendments, and argument to the USPTO. (See Audio-
`
`Technica’s Motion, Ex. D). The results of these PTO reissue proceedings will decide the scope
`
`of claims this Commission can consider regarding the ‘792 patent at issue in this matter.2
`
`Allowing an interested, non-independent individual that is engaged in patent prosecution
`
`for technology and products in competition with Phitek access to sensitive documents of Phitek
`
`would be unprecedented and extremely harmful to Phitek because of the high risk that such
`
`individual could inadvertently disclose the CBI or use the information to Phitek’s detriment.
`
`As part of its first set of interrogatories and first requests for production of documents,
`
`Bose has requested highly sensitive confidential materials from Phitek, including all materials
`
`involved with “design, development, structure, function, operation, fabrication, production,
`
`manufacturing, assembly, and testing” (Bose Interrogatory No. 3), documents relating to the
`
`“research, design, development, structure, operation, engineering, manufacture, use, testing, or
`
`sampling” of the technology at issue (Bose Document Request No. 12), and documents relating
`
`to the “structure, function, operation, capabilities, features, design, research, development,
`
`testing, or simulation.” (Bose Document Request No. 13).
`
`Phitek has been in the business of designing, manufacturing, and selling headphones
`since 2003. (Donaldson Dec. ¶2, attached hereto as Ex. A). Phitek researches and develops
`audio products. (Donaldson Dec. ¶3, attached hereto as Ex. A). Phitek customizes headphones
`for its customers, including the other Respondents in this matter. (Donaldson Dec. ¶4, attached
`
`
`
`2 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.
`
`5041095v.5
`
`- 3 -
`
`

`
`hereto as Ex. A). As a result, all of the Respondents in this matter have CBI that is the fruit of
`Phitek’s research and development. (Donaldson Dec. ¶4, attached hereto as Ex. A). Said CBI is
`protected by confidentiality agreements between Phitek and its customers because the
`information constitutes trade secrets. (Donaldson Dec. ¶4, attached hereto as Ex. A). Phitek
`gains a considerable competitive advantage from its proprietary research and development, and
`the disclosure of that information to competitors would be extremely harmful to Phitek.
`(Donaldson Dec. ¶5, attached hereto as Ex. A). Nevertheless, as stated in Audio-Technica’s and
`Panasonic’s Motions, Bose’s discovery requests seek the discovery of CBI, and the other
`Respondent’s CBI includes Phitek’s CBI. To the extent Phitek and the other Respondents are
`required to produce CBI, Mr. Heiken’s access to such information would be detrimental to
`Phitek.
`Mr. Hieken’s intimate involvement and contacts with Bose make any disclosure of
`Respondents’ confidential trade secrets, research, and other CBI extremely detrimental to the
`interests of Respondents. Any knowledge of Phitek CBI gained by Mr. Hieken and any persons
`similarly situated, whether intended or not, may inevitably be used in prosecuting Bose’s patent
`applications. Mr. Heiken could modify the claims currently pending in the reissue application
`for the ‘792 Patent, or in other pending applications, with knowledge of Phitek’s CBI. Misuse
`of the Phitek CBI in the course of Mr. Hieken’s consulting and patenting activities would cause
`significant and irreparable economic harm to Phitek. Whether intentional or inadvertent, Mr.
`Hieken’s knowledge of Phitek’s CBI could give Bose an unwarranted advantage in the
`marketplace to the detriment of Phitek and other Respondents. Recognizing the inherent conflict
`and concomitant risk of inadvertent disclosure, the ITC and other Federal Courts have regularly
`precluded patent prosecution attorneys from viewing an opposing party’s CBI, or in the
`alternative have imposed prosecution bars upon such patent prosecution attorneys who have
`access to an opposing party’s CBI.
`For the reasons stated herein, the Protective Order governing this case should be amended
`
`so as to impose a prosecution bar on Mr. Hieken and all similarly-situated individuals who view
`
`5041095v.5
`
`- 4 -
`
`

`
`CBI, or, in the alternative, to preclude Mr. Hieken and all those working with him on patent
`
`prosecution on the patents in suit and any related patent from gaining access to any CBI or
`
`materials disclosed in this case by any Respondent.
`
`Dated: March 3, 2008
`
`Respectfully Submitted,
`
`/s/ Mark A. J. Fassold
`Bill Nash
`Dan Chapman
`Mark A. Fassold
`JACKSON WALKER L.L.P.
`112 E. Pecan Street, Suite 2400
`San Antonio, Texas 78205-1521
`Telephone: 210-978-7700
`Facsimile: 210-978-7790
`
`Attorneys for Phitek Systems Limited (NZ) and
`Creative Labs, Inc.
`
`5041095v.5
`
`- 5 -
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that copies of the foregoing Memoranda in Support of Phitek Systems Limited’s
`(NZ) Motion Amend Protective Order has been served on March 3, 2008, as indicated, on the
`following:
`
`Marilyn R. Abbott
`Secretary
`U.S. International Trade Commission
`500 E. Street, S.W., Room 112A
`Washington, DC 20436
`
`Original and six copies
`
`The Honorable Charles E. Bullock
`Administrative Law Judge
`U.S. International Trade Commission
`500 E. Street, S.W., Room 317
`Washington, DC 20436
`
`2 copies
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via E-File
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`Jennifer Whang
`Administrative Law Judge Attorney-Advisor
`
`2 copies w/out attachments
`
`Via Electronic Mail
` Via First Class Mail
`Via Hand Delivery
`
`T. Spence Chubb, Esq.
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E. Street, S.W. Room 401-F
`Washington, DC 20436
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`5041095v.5
`
`- 6 -
`
`

`
`Ruffin B. Cordell
`Andrew R. Kopsidas
`Jeffrey R. Whieldon
`FISH & RICHARDSON P.C.
`1425 K Street, N.W.
`Washington, DC 20005
`
`Attorneys for Complainant Bose Corporation
`
`Charles Hieken
`Gregory A. Madera
`Adam J. Kessel
`FISH & RICHARDSON P.C.
`225 Franklin Street
`Boston, MA 02 1 10
`
`Attorneys for Complainant Bose Corporation
`
`James P. White
`Gerald T. Shekleton
`J. Aron Carnahan
`Welsh & Katz Ltd.
`120 South Riverside Plaza, 22nd Floor
`Chicago, Illinois 60606
`
`Attorneys for Respondent Audio Technica,
`U.S. Inc.
`
`Arthur Wineburg
`Daniel E. Yonan
`Akin Gump Strauss Hauer & Feld, LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036
`
`Attorneys for Respondent Audio Technica,
`U.S. Inc.
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
` Via Electronic Mail
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`Tom M. Schaumberg
`
`5041095v.5
`
`Via First Class Mail
`
`- 7 -
`
`

`
`Jamie D. Underwood
`Adduci, Mastriani & Schaumberg, LLP
`1200 Seventeenth Floor, NW, Fifth Floor
`Washington, DC 20036
`
`Attorneys for Panasonic Corporation of North
`America
`Daniel Ebenstein
`Abraham Kasdan
`Joseph Casino
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`
`Attorneys for Panasonic Corporation of North
`America
`
`Alan Cope Johnston
`G. Brian Busey
`Cynthia Lopez Beverage
`MORRISON FOERSTER
`2000 Pennsylvania Ave., NW
`Washington, D.C. 20006-1888
`
`Attorneys for Phitek Systems Limited and
`Creative Labs, Inc.
`
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`Via First Class Mail
`Via Hand Delivery
`Via Overnight Delivery
`Via Facsimile
`Via Electronic Mail
`
`/s/ Mark A. J. Fassold__________________
`Mark A. J. Fassold
`
`5041095v.5
`
`- 8 -