UNITED STATES INTERNATIONAL TRADE COMMISSION
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`In the Matter of
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`Washington, D.C.
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`I
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`CERTAIN NOISE CANCELLING HEADPHONES
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`Inv. No. 337-TA-62f
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`ORDER NO. 6: GRANTING IN PART RESPONDENT’S MOTION TO AMEND T&
`PROTECTIVE ORDER
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`(March 14,2008)
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`On February 27,2008, Respondent Audio-Technica U.S., Inc. (“AT”) filed a motion (626-
`004) to amend the protective order pursuant to 19 C.F.R. 3 210.34. On February 28, 2008,
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`Respondent Panasonic Corporation of North America (“Panasonic”) filed a motion (626-005) to
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`amend the protective order. On March 4,2008, Respondent Phitek Systems Ltd.’s (NZ) (“Phitek”)
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`filed a motion (626-006) to amend the protective order. On March 7, 2008, Complainant Bose
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`Corporation (“Bose”) filed a motion (626-007) for an extension of time to respond to the motions
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`for protective order, which was granted in Order No. 5. On March 13,2008, Bose filed an opposition
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`to the motion. On March 13,2008, the Commission Investigative Staff (“Staff”) filed a response in
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`partial support of the motion.
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`AT moves to preclude Mr. Charles Hieken of Fish & Richardson from signing onto the
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`protective order, or in the alternative, to impose a two-year prosecution bar on Mr. Hieken for any
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`Bose patents related to the subject matter of this investigation. According to AT, it is concerned that
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`Mr. Hieken, and possibly other persons involved in Bose patent prosecution matters related to the
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`subject matter of this investigation, will inadvertently disclose AT’S confidential business
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`information (“CBI”) and that Mr. Hieken’s viewing of AT’S CBI can “infect the advice and decisions
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`he makes regarding the Bose prosecution matters, whether consciously or not, in violation of the
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`Protective Order.”’ According to AT, Mr. Hieken has personally prosecuted the patents-at-issue in
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`this investigation and is involved in prosecuting the reissue proceeding of U.S. Patent No. 6,597,792.
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`According to AT, because Mr. Hieken is involved in the reissue proceeding, he could modify the
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`claims in the reissue or in other pending Bose patent applications. Panasonic moves to amend the
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`protective order on the same basis as to Panasonic CBI, while Phitek moves to amend the protective
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`order as to Phitek CBI.
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`According to Respondents, the Commission and the Federal Courts have regularly precluded
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`patent prosecution attorneys from viewing an opposing party’s CBI, or in the alternative, have
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`imposed prosecution bars upon such patent prosecution attorneys who have access to an opposing
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`party’s CBI. In support, Respondents cite to US. Steep and Certain Scanning Sy~tems.~
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`Bose opposes the motion. According to Bose, Respondents are attempting to deprive Bose
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`of informed legal advice from its choice of counsel. Bose argues that, on balance, Respondents’
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`concerns about the potential misuse of their CBI does not outweigh the real and immediate harm
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`Bose would suffer if deprived of its choice of counsel. Bose asserts that, although the Complaint for
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`this investigation was only filed in November 2007, the dispute has been ongoing for over a year
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`because of a parallel district court action, which commenced in March 2007. Bose asserts that, under
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`the standard set forth in US. Steel, Respondents cannot prevail because Mr. Hieken is not involved
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`See AT’S memorandum at 1.
`US. Steel Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984) (“US. Steel”).
`Certain Scanning Multiple Beam Equalizing Systems for Chest Radiography and
`Components Thereof, Inv. No. 337-TA-326, Order No. 1 (March 12, 1991) (“Certain Scanning
`Systems”). See also Certain Set Top Boxes and Components Thereof, Inv. No. 337-TA-454, Order
`No. 6 (May 17,2001) and Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-
`602, Order No. 3 (July 26,2007).
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`in any “competitive decisionmaking” for Bose. According to Bose, patent prosecution itself, nor
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`history and relationships, constitute “competitive decisionmaking.”
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`Staff supports the motion in part. According to Staff, Respondents have provided sufficient
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`information to justi@ a patent prosecution bar on Mr. Hieken if he desires to have access to
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`Respondents’ CBI. Staff opposes, however, a prosecution bar on any of Bose’s other attorneys, as
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`no factual justification has been set forth for any other attorneys.
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`This issue has been raised in other Section 337 investigations, but without consistent results.
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`There is no dispute among the parties that an ALJ has the power to modify the protective order to
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`give attorneys the choice between prosecuting patents relating to the subject matter of the
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`investigation and obtaining access to CBI under the protective order.4
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`In Certain GFCIs,’ the ALJ noted that there are relatively few investigations where the
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`protective order has been amended to include a prosecution bar. Certain GFCIs enumerated that
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`there should be a case-by-case determination of whether or not access to confidential information
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`should be permitted, which is based on the Federal Circuit’s decision in US. Steel. Although US.
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`Steel involved whether in-house counsel should be denied access to confidential business
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`information under a protective order, rather than patent prosecution attorneys, US. Steel serves as
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`a general framework for ruling on questions involving access to confidential information by those
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`who might inadvertently breach their duties under a protective order. In US. Steel, the Federal
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`Circuit considered whether or not the counsel in question was involved in “competitive
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`See Certain Amorphous Metal Alloys and Amorphous Metal Particles, Inv. No. 337-TA-
`143, Comm’n Op. Following the Commission’s Action and Order Issued July 22m 1984, at 2 n.4
`(August 4, 1983) (“Certain Amorphous Metals”).
`See Certain Ground Fault Circuit Interrupters and Products Containing Same, Inv. No.
`337-TA-615, Order No. 8 (December 17,2007) (“Certain GFCIs”).
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`decisionmaking,” i. e. counsel’s activities that involve advice and participation in any or all of the
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`client’s decisions, such as pricing, product design, etc., made in light of similar or corresponding
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`information about a competitor.
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`Based on a review of the facts and circumstances surrounding this investigation, the
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`undersigned finds Respondents’ and Staffs arguments to be persuasive. There is no dispute that Mr.
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`Hieken is currently involved with prosecuting Bose’s patent applications and the reissue proceedings
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`and that he will continue to be involved prosecuting patents for Bose in the future. Mr. Hieken has
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`been outside counsel for Bose for more than forty years, was one of the original organizers of Bose
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`in 1964, and has counseled Bose in hundreds of legal matters. Bose admits that it has had a decades-
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`long relationship with Mr. Hieken, who is its most trusted legal advisor. Because of Mr. Hieken’s
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`close relationship with Bose and likely continued representation of Bose in the future, the
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`undersigned finds that Respondents concern about the potential misuse of their CBI exists which
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`cannot be ignored and that the risk of inadvertent disclosure is unnecessarily high. As stated in
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`Certain Scanning Systems,
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`The issue is not whether patent counsel here may decide sometime in the future to
`prosecute a patent involving the same subject matter, but whether complainant’s
`counsel may represent his client here and get access to his competitor’s confidential
`information under the protective order when that confidential information may be
`relevant to concurrent proceedings in the PTO where that confidential information
`may not be available.6
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`As for the prejudice to Bose if he Mr. Hieken is not allowed to access Respondents’ CBI in this
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`investigation, such prejudice can be overcome by Mr. Hieken’s agreement or stipulation to a
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`Certain Scanning Systems, Inv. No. 337-TA-326, Order No. 1 (March 12, 1991).
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`prosecution bar,’ which would allay Respondents’ concerns. Alternatively, if Mr. Hieken chooses
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`to continue to represent Bose at the Patent Office, he may also continue to participate in this
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`investigation, so long as he does not have access to any non-Bose CBI.
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`Accordingly, the undersigned finds merit to Respondents’ and Staffs concerns regarding Mr.
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`Hieken’s access to Respondents’ confidential business information. The undersigned finds that
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`amending the protective order to include a prosecution bar as to Mr. Hieken, however, would be
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`difficult fiom both a monitoring and enforcement standpoint. Rather, the undersigned finds that a
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`more appropriate course of action would be to deny Mr. Hieken access to non-Bose CBI unless he
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`enters into an agreement or stipulation agreeing to a prosecution bar for a specified period of time.
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`Absent such stipulation, the undersigned hereby denies Mr. Hieken access to non-Bose CBI under
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`the protective order.
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`As to Respondents request for a prosecution bar as to other attorneys that may be involved
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`in the prosecution of Bose patent, the undersigned denies the request. As stated in Certain GFCls,
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`the determination as to whether a prosecution bar is appropriate should be made on a case-by-case
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`basis, rather than applying a general blanket rule to all present and future counsel engaged in any sort
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`of patent prosecution.
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`SO ORDERED.
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`Administrative Law Judge
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`The undersigned takes no position on the appropriate length of time of such a prosecution
`bar and leaves that to the discretion of the parties.
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`IN THE MATTER OF CERTAIN NOISE
`CANCELLING HEADPHONES
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`337-T A-626
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`CERTIFICATE OF SERVICE
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`I, Marilyn R. Abbott, hereby certify that the attached ORDER was served upon, T. Spence
`Chubb, Esq., Commission Investigative Attorney, and the following parties via first class mail
`and air mail where necessary on March 14
`,2008..
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`U.S. Intern&ional Trade Commission
`500 E Street, S.W., Room 112A
`Washington, DC 20436
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`FOR COMPLAINANT BOSE CORPORATION:
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`Autumn J. Hwang, Esq.
`Ruffin B. Cordell, Esq.
`Andrew R. Kopsidas, Esq.
`Jeffrey R. Whieldon, Esq.
`FISH & RICHARDSON, P.C.
`1425 K Street, N.W., 1 lth Floor
`Washington, DC 20005
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`Charles Hieken, Esq.
`Gregory A. Madera, Esq.
`Adam J. Kessel, Esq.
`FISH & RICHARDSON, P.C.
`225 Franklin Street
`Boston, MA 021 10
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`Jordan Fowles, Esq.
`FISH & RICHARDSON P.C.
`1717 Main Street, Suite 5000
`Dallas, TX 75201
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`IN THE MATTER OF CERTAIN NOISE
`CANCELLING HEADPHONES
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`337-TA-626
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`FOR RESPONDENTS PHITEK SYSTEMS LIMITED
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`Alan Cope Johnson, Esq.
`G. Brian Busey, Esq.
`Cynthia Lopez, Esq.
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Ave, N.W.
`Washington, DC 20006
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`Dan Chapman, Esq.
`Mark Fassold, Esq.
`JACKSON WALKER L.L.P.
`112 E. Pecan Street, Suite 2400
`San Antonio, TX 78205
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`FOR RESPONDENT AUDIO TECHNICA U.S., INC.
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`Daniel E. Yonan, Esq.
`Arthur Wineburg, Esq.
`AKIN GUMP STRAUSS HAUER & FELD LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036
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`James P. White, Esq.
`Gerald T. Shekleton, Esq.
`J. Aron Carnanhan, Esq.
`WELSH & KATZ, LTD.
`120 South Riverside Plaza, 22nd Floor
`Chicago, IL 60606
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`FOR RESPONDENT CREATIVE LABS INC.
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`Alan Cope Johnston, Esq.
`G. Brian Busey, Esq.
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Avenue, N.W., Suite 5500
`Washington, DC 20006
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`IN THE MATTER OF CERTAIN NOISE
`CANCELLING HEADPHONES
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`337-TA-626
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`FOR RESPONDENT PANASONIC CORPORATION OF NORTH AMERICA
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`Tom M. Schaumberg, Esq.
`Jamie D. Underwood, Esq.
`ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P.
`1200 Seventh Street, N.W., Fifth Floor
`Washington, DC 20036
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`Daniel S. Ebenstein, Esq.
`AMSTER ROTHSTEIN & EBENSTEIN, L.L.P.
`90 Park Avenue
`New York, NY 100 16
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`RESPONDENTS:
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`GN NETCOM, INC.
`77 Northeastern Boulevard
`Nashua, NH 03062
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`LOGITECH INC.
`6505 Kaiser Drive
`Fremont, CA 94555
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`Sherry Robinson
`LEXIS - NEXIS
`8891 Gander Creek Drive
`Miamisburg, OH 45342
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`Ronnita Green
`Thomson West
`1100 - 13th Street NW
`Suite 200
`Washington, DC 20005
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