UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`Before the Honorable Charles E. Bullock
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`Inv. No. 337-TA-626
`
`COMMISSION INVESTIGATIVE STAFF’S
`RESPONSE TO RESPONDENTS’ MOTIONS
`TO AMEND PROTECTIVE ORDER
`
`The Commission Investigative Staff (“Staff”) respectfully submits this response to the
`
`motions of Respondents Audio-Technica U.S., Inc. (“AT”), Panasonic Corporation of North
`
`America’s (“Panasonic”), and Phitek Systems Ltd. (NZ) to amend the Protective Order (“PO”). 1
`
`Respondents seek to preclude Complainant’s patent prosecution counsel from obtaining access to
`
`confidential business information unless they agree to a prosecution bar lasting two years after
`
`the final conclusion of the investigation, including all appeals. The Commission Investigative
`
`Staff supports the motions in part.
`
`The Respondents' motions primarily focus on the fact that Charles Hieken, an attorney at
`
`Fish & Richardson, has filed a subscription to the PO. Respondents assert that Mr. Hieken has
`
`prosecuted numerous patents for Complainant Bose Corporation, and that he has a long-standing
`
`relationship with Bose, including having been an original organizer of Bose and President of
`
` Motion Docket Nos. 626-4 through 626-6. In Order No. 5 (March 10, 2008), the
`1
`Administrative Law Judge permitted the Complainant and the Commission Investigative Staff to
`respond to all three motions on March 13, 2008.
`
`
`Washington, D.C.
`
`Before the Honorable Charles E. Bullock
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`Inv. No. 337-TA-626
`
`COMMISSION INVESTIGATIVE STAFF’S
`RESPONSE TO RESPONDENTS’ MOTIONS
`TO AMEND PROTECTIVE ORDER
`
`The Commission Investigative Staff (“Staff”) respectfully submits this response to the
`
`motions of Respondents Audio-Technica U.S., Inc. (“AT”), Panasonic Corporation of North
`
`America’s (“Panasonic”), and Phitek Systems Ltd. (NZ) to amend the Protective Order (“PO”). 1
`
`Respondents seek to preclude Complainant’s patent prosecution counsel from obtaining access to
`
`confidential business information unless they agree to a prosecution bar lasting two years after
`
`the final conclusion of the investigation, including all appeals. The Commission Investigative
`
`Staff supports the motions in part.
`
`The Respondents' motions primarily focus on the fact that Charles Hieken, an attorney at
`
`Fish & Richardson, has filed a subscription to the PO. Respondents assert that Mr. Hieken has
`
`prosecuted numerous patents for Complainant Bose Corporation, and that he has a long-standing
`
`relationship with Bose, including having been an original organizer of Bose and President of
`
` Motion Docket Nos. 626-4 through 626-6. In Order No. 5 (March 10, 2008), the
`1
`Administrative Law Judge permitted the Complainant and the Commission Investigative Staff to
`respond to all three motions on March 13, 2008.
`
`
`
`2
`
`Bose during the 1960s. Audio-Technica Mem. at 3-5. Perhaps most significantly, Mr. Hieken is
`
`presently prosecuting the reissue of one of the patents at issue in this investigation. Id. at 3.
`
`Whether to impose a prosecution bar on patent prosecution counsel who ask for access to
`
`confidential business information is an issue that has been raised several times in Section 337
`
`investigations, without consistent results. While it is not uncommon for such a bar to be put into
`
`place where all parties agree, whether to do so in cases where there is opposition to the bar is less
`
`clear. Here, Complainant opposes Respondents' motions.
`
`There is no question that the Administrative Law Judge has the power to modify the PO
`
`to give attorneys the choice between prosecuting patents relating to the subject matter of the
`
`investigation and obtaining access to confidential information under the PO. Certain Amorphous
`
`Metal Alloys and Amorphous Metal Particles, Inv. No. 337-TA-143, Commission Opinion
`
`Following the Commission's Action and Order Issued July 22, 1984, at 2 n.4 (August 4, 1983).
`
`Cases where a prosecution bar has been imposed include Certain GPS Devices and Products
`
`Containing Same, Inv. No. 337-TA-602, Order No. 3, Amendment to Protective Order, ¶ 23 (July
`
`16, 2007) (unopposed motion to amend); Certain Set Top Boxes and Components Thereof, Inv.
`
`No. 337-TA-454, Order No. 6, at 6-7 (May 17, 2001) (imposed by Judge in response to a
`
`respondent’s request in a discovery statement); Certain Excimer Laser Systems for Vision
`
`Correction Surgery and Components Thereof and Methods for Performing Such Surgery, Inv.
`
`No. 337-TA-419, Order No. 32, at 3-4 (July 6, 1999) (opposed motion to amend); Certain
`
`Hardware Logic Emulation Systems, Inv. No. 337-TA-383, Order No. 8, at 6-7 (March 21, 1996)
`
`(opposed motion to amend); and Certain Scanning Multiple Beam Equalization Systems For
`
`
`
`Chest Radiography and Components Thereof, Inv. No. 337-TA-326, Order No. 1, at 5 (March
`
`3
`
`12, 1991).
`
`Cases in which a request for a patent prosecution bar was denied include the Amorphous
`
`Metal Alloys case, cited above, and a recent decision by Judge Charneski in Certain Ground
`
`Fault Circuit Interrupters and Products Containing Same, Inv. No. 337-TA-615, Order No. 8
`
`(December 17, 2007) (“GFCIs”). In the latter case, the complainant sought a patent prosecution
`
`bar requiring all attorneys in the case to choose between refraining from prosecuting patents in
`
`the GFCI field for one year or obtaining access to confidential information under the protective
`
`order. The complainant’s motion, however, focused primarily on the prosecution role of one
`
`particular attorney for one of the respondents. The Judge refused to impose any prosecution bar
`
`in GFCIs, saying that complainant’s arguments regarding the particular attorney did not convince
`
`him of the need for a general bar. The Judge went on to state:
`2
`
`If complainant seeks to bar any particular attorney from both fully participating in
`the present investigation (i.e., having full access to CBI) and from prosecuting
`ground fault circuit interrupter patents, then it should say so. In that event, the
`issue will be more clearly defined and thus, consistent with the case law cited by
`
` The Judge also observed that:
`
`2 .
`
` . . while many hundreds of protective orders have issued in section 337
`investigations, the protective orders amended to contain any sort of prosecution
`bar are few in number. Indeed, it is telling that a prosecution bar is not a standard
`provision of the CBI protective order issued in section 337 investigations. It is
`only through a relatively small number of recorded amendments that such a
`provision has been added to any protective orders.
`
`GFCIs at 4.
`
`
`
`4
`
`complainant, allow for a “case-by-case” determination by the court as to the
`prosecution bar issue.
`
`GFCIs at 7-8.3
`
`Patent prosecution bars can be appropriate in many cases, are often put into place by
`
`agreement of the parties, and sometimes have been put into place over opposition. However, the
`
`recent order in GFCIs suggests that the proper approach to whether such a bar should be imposed
`
`where the parties do not all agree to it is to assess whether the movant has provided an adequate
`
`factual justification. In the present case, the Respondents’ motions focus on Mr. Hieken and do
`
`not provide any factual justification for imposing a prosecution bar on any of Complainant’s
`
`other attorneys. 4
`
`On the other hand, Respondents have provided sufficient information here to justify a
`
`patent prosecution bar on Mr. Hieken if he desires to have access to Respondents’ confidential
`
`technical information. As stated above, Mr. Hieken has prosecuted numerous patents for Bose,
`
`he has had a relationship with Bose for over 40 years, including having been President of Bose,
`
`and he is presently prosecuting the reissue of one of the patents at issue in this investigation.
`
`Under these circumstances, the Staff agrees with Respondents that Mr. Hieken should choose
`
`between gaining access to confidential technical information under the PO while agreeing to
`
` In GFCIs, only a general prosecution bar (applying to all attorneys) was requested, and
`3
`the Judge did not specifically discuss whether a bar as to an individual attorney would be
`warranted.
`
` The Respondents also do not discuss whether, if the Judge were to grant their motions,
`4
`they would be willing to accept a similar patent prosecution bar on their own attorneys.
`
`
`
`5
`
`forego prosecuting patents in the headphones field for a period of time, and not being permitted
`
`to see Respondents’ information under the PO.5
`
`For the foregoing reasons, Respondents’ motions to amend the PO should be granted in
`
`part.
`
`Respectfully submitted,
`
`/s/ T. Spence Chubb
`Lynn I. Levine, Director
`T. Spence Chubb, Supervisory Attorney
`
`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. International Trade Commission
`500 E Street, S.W., Suite 401
`Washington, D.C. 20436
`(202) 205-2575
`(202) 205-2158 (Facsimile)
`
`March 13, 2008
`
` Mr. Hieken could continue to appear for Bose in this case, but would be denied access
`5
`to Respondents’ confidential information.
`
`
`
`Certain Noise Cancelling Headphones
`
`Investigation No. 337-TA-626
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on March 13, 2008, he caused the foregoing COMMISSION INVESTIGATIVE
`STAFF’S RESPONSE TO RESPONDENTS’ MOTIONS TO AMEND PROTECTIVE ORDER to be filed
`with the Secretary, served by hand upon Administrative Law Judge Charles E. Bullock (2 copies), and served upon
`the parties (1 copy each) in the manner indicated below:
`
`Counsel for Complainant Bose Corporation
`
`Ruffin B. Cordell
`Andrew R. Kopsidas
`Jeffrey R. Whieldon
`Autumn J. Hwang, Esq.
`FISH & RICHARDSON P.C .
`1425 K Street, N.W., Suite 1100
`Washington, DC 20005
`Telephone: 202-783-5070
`Facsimile: 202-783-2331
`
`Jordan Fowles
`FISH & RICHARDSON P.C .
`717 Main Street, Suite 5000
`Dallas, TX 75201
`Telephone: 214-747-5070
`Facsimile: 202-747-2091
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`Counsel for Respondents Creative Labs, Inc., Phitek
`Systems Limited, GN Netcom, Inc., and Logitech Inc.
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`William B. Nash
`Dan Chapman
`Mark Fassold
`JACKSON WALKER L.L.P.
`112 E. Pecan Street, Suite 2400
`San Antonio, Texas 78205
`Telephone: 210-978-7700
`Facsimile: 210-242-4620
`
`Alan Cope Johnson
`G. Brian Busey
`Cynthia Lopez
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Ave, N. W.
`Washington, DC 20006
`Telephone: 202-887-1500
`Facsimile: 202-887-0168
`
`
`
`Counsel for Respondent Audio Technica U.S., Inc.
`
`-ii-
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`Arthur Wineburg
`Daniel E. Yonan
`AKIN GUMP STRAUSS HAUER & FELD LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036
`Telephone: 202-887-4000
`Facsimile: 202-887-4288
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`James P. White
`Gerald T. Shekleton
`J. Aron Carnanhan
`WELSH & KATZ, LTD.
`120 South Riverside Plaza, 22”d Floor
`Chicago, IL 60606
`Telephone: 312-655-1500
`Facsimile: 312-655-1501
`
`Counsel for Respondent Panasonic Corporation of North America
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`Tom M. Schaumberg
`Jamie D. Underwood
`ADDUCI, MASTRIANI & SCHAUMBERG, LLP
`1200 Seventeenth Street, N.W., Fifth Floor
`Washington, DC 20036
`Telephone: 202-467-6300
`Facsimile: 202-466-2006
`
`BY E-MAIL AND FIRST CLASS MAIL
`
`Daniel S. Ebenstein
`Abraham Kasdan
`Joseph M. Casino
`David A. Boag
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: 212-336-8000
`Facsimile: 212-336-8001
`
` /s/ T. Spence Chubb
`T. Spence Chubb
`Supervisory Attorney
`
`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. International Trade Commission
`500 E Street, S.W., Suite 401
`Washington, D.C. 20436
`(202) 205-2575
`(202) 205-2158 (fax)
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