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 PHITEK SYSTEMS
`LIMITED’S (NZ) FIRST MOTION TO COMPEL DISCOVERY FROM BOSE
`CORPORATION
`
`I.
`
`INTRODUCTION
`
`On March 27, 2008, Respondent Phitek Systems Limited (“Phitek”) filed a motion to
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`compel Complainant Bose Corporation (“Bose”) to provide complete and adequate responses to
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`certain interrogatories and requests for production concerning the methodology and test results
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`used by Bose to support its allegation that Respondents’ headphones infringe claim 1 of U.S.
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`Patent 5,181,272 (“the ‘272 patent”). Specifically, Phitek seeks to compel discovery on the test
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`methods used to determine “compliance” numbers that are referenced in attachments to Bose’s
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`Complaint and in response to Phitek’s first set of interrogatories. Phitek additionally requests
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`that Bose be compelled to “clarify” the methodology previously disclosed by Bose during
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`settlement discussions in the form of a Rule 408 letter by answering specific questions recited in
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`its motion. Because Bose has represented that it does not intend to rely upon these compliance
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`numbers as evidence at the hearing to support its infringement allegations, the Staff believes that
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`the discovery sought by Phitek is protected by the work product doctrine and Rule 26(b)(4)(b) of
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`the Federal Rules of Civil Procedure. Accordingly, Phitek’s motion should be denied. 1
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`II.
`
`DISCUSSION
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`The attorney work product doctrine, as codified under Federal Rule of Civil Procedure
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`26(b)(3) and as applied in Section 337 investigations, protects from discovery documents and
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`other tangible things that are prepared by a party or its counsel in anticipation of litigation or for
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`trial unless the party seeking the discovery “shows that it has substantial need for the materials to
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`prepare its case and cannot, without undue hardship, obtain their substantial equivalent by other
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`means.” Fed. R. Civ. P. 26(b)(3). Furthermore, a party may seek discovery as to facts known or
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`opinions held by a non-testifying expert only upon “showing exceptional circumstances under
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`which it is impracticable for the party to obtain facts or opinions on the same subject by other
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`means.” Fed. R. Civ. P. 26(b)(4)(B). Under the “fairness doctrine,” however, a party may not
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`use the work product privilege as both a “sword” and a “shield” by selectively disclosing only
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`favorable information in support of its position against an opposing litigant while at the same
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`time resisting disclosure of unfavorable information covering the same subject matter. Certain
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`Network Controllers and Products Containing Same, Inv. No. 337-TA-531 (“Network
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`Controllers”), Order No. 15 (July 19, 2005) (citing Bristol-Meyers Squibb Co. v. Rhone-Poulenc
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`Rorer, Inc., 1997 WL 801454 at *1 (S.D.N.Y. 1997)).
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`Phitek asserts that Bose is attempting to use the compliance measurements set forth in
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`Exhibits 12 and 13 to its Complaint and Exhibits 5 and 7 to its responses to interrogatories as a
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` If it turns out that Bose does intend to rely upon these compliance numbers as evidence
`1
`in this investigation, however, the Staff submits that an implied subject matter waiver may be
`found as to any applicable privileges.
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`3
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`“sword” in support of its position against Phitek, while at the same time asserting the work
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`product privilege as a “shield” against the disclosure of relevant information covering the same
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`subject matter. Citing Network Controllers, Phitek argues that “Bose should not be permitted to
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`abuse the privileges doctrine and avoid disclosure of the underlying methodology when it relies
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`upon compliance values obtained through application of that methodology.” Phitek Mem. at 7-
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`8. In that investigation, the respondents sought discovery about pre-suit testing that was
`2
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`specifically relied upon and referred to by the complainant’s testifying expert in his expert report
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`and in the complainant’s responses to contention interrogatories. Under those circumstances,
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`subject matter waiver of the attorney work product privilege was found because the complainant
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`gave the impression that it was going to rely upon its pre-suit testing to prove infringement.
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`Network Controllers, Order No. 15 at 6.
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`The Staff submits that Certain Network Controllers is distinguishable. Subject matter
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`waiver of materials protected by the work product doctrine has generally been found only when a
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` Phitek does not appear to dispute that, absent waiver under the “fairness doctrine,” the
`2
`information it seeks would be otherwise privileged under the work product doctrine. Courts have
`generally found information about pre-suit analysis or testing of an alleged infringer’s product to
`be privileged unless subject matter waiver or other exceptional circumstances justifying the need
`for that information were found. See Tillotson Corp. v. Shijiazhuang Hongray Plastic Prods.,
`Ltd., 244 F.R.D. 683, 693 (D. Ga. 2007) (holding that plaintiff will not be required to disclose
`test data unless it relies upon that information to support its infringement claims or will use that
`information in the future); ReedHycalog UK, Ltd. v. Baker Hughes Oilfield Operations, Inc., 242
`F.R.D. 357, 360 (E.D. Tex. 2007) (finding that in light of the difficulty in measuring the claimed
`characteristics, the defendant may take discovery on the plaintiff’s “knowledge of the universe of
`testing methods available to measure temperature gradient or impact strength,” but that the
`plaintiff “is not required to indicate which testing method it prefers or describe any work-product
`theory of infringement”); Fresnius Medical Care Holdings, Inc. v. Roxane Laboratories, Inc.,
`2007 U.S. Dist. LEXIS 12018, *7-11 (D. Ohio 2007) (finding inapplicable “the proposition that a
`sufficient showing to overcome the work-product privilege is made when it becomes fairly
`apparent both that the plaintiff conducted pre-suit testing and the results of that testing were
`completely inadequate to justify claims of patent infringement”).
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`4
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`testifying expert has specifically considered or relied upon the information alleged to be
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`privileged, or when the party asserting privilege has otherwise indicated that it will use the
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`privileged information as evidence at the hearing. See Certain Encapsulated Integrated Circuit
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`Devices and Products Containing Same, Inv. No. 337-TA-501, Order No. 53, at 9-12 (May 20,
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`2004); see also Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate
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`Compounds Thereof, Inv. No. 337-TA-604, Order No. 23, at 4 (Oct. 1, 2007) and Order No. 33,
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`at 3 (Nov. 26, 2007) (holding that complainants should not be compelled to produce any testing
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`data if they decided not to use any of the testing data as evidence during the hearing).
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`Expert discovery has not yet begun in this investigation, and Bose has indicated that its
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`testifying experts will not rely upon the pre-suit compliance testing to support their opinions at
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`the hearing. While Bose may have referred to the pre-suit compliance testing in its Complaint
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`and in response to Respondents’ contention interrogatories, the Staff does not believe this alone
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`is sufficient to demonstrate that Bose intends to rely upon those test results to prove
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`infringement. See Certain Rechargeable Lithium-Ion Batteries, Components Thereof, and
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`Products Containing Same, Inv. No. 337-TA-600, Order No. 16, at 4 (Sept. 26, 2007)
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`(distinguishing Network Controllers because it was not clear that the complainant waived
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`attorney work product based on its interrogatory response).
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`If Bose intends to present evidence concerning the compliance testing through expert
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`testimony or otherwise to support its infringement allegations in this investigation, the Staff
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`submits that Respondents should be entitled to discovery as to the methodologies that have been
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`used by Bose to determine those compliance numbers. At this point, without the benefit of
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`expert discovery, it is premature to determine which evidence will be relied upon by Bose to
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`5
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`support its infringement contentions. Based on its representations, however, Bose should be
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`precluded from relying upon the pre-suit compliance testing as evidence in this investigation
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`unless it chooses to produce the information concerning the underlying methodologies at the
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`earliest practicable time.
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`In its motion, Phitek additionally seeks to compel Bose to “clarify the previously
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`produced but incomplete methodology” disclosed by Bose during settlement discussions by
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`answering seven questions (with several sub-parts) that are recited in its motion. As stated
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`above, the methodology is protected under the work product doctrine unless Bose chooses to rely
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`upon the compliance test results as evidence in this investigation. Moreover, the information
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`Phitek seeks does not appear to have been requested in any interrogatories or other formal
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`discovery requests. To the extent that Bose’s testifying experts intend to rely upon test results
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`generated according to a particular methodology, the Staff submits that Phitek’s questions would
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`be more appropriate once that determination is made.
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`

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`III.
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`CONCLUSION
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`6
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`For the reasons stated herein, Phitek’s motion to compel should be denied.
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`Respectfully submitted,
`
`/s/ Christopher G. Paulraj
`Lynn I. Levine, Director
`T. Spence Chubb, Supervisory Attorney
`Christopher G. Paulraj, Investigative 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)
`
`April 7, 2008
`
`

`
`Certain Noise Cancelling Headphones
`
`Investigation No. 337-TA-626
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on April 7, 2008, he caused the foregoing COMMISSION INVESTIGATIVE
`STAFF’S RESPONSE TO PHITEK’S MOTION TO COMPEL 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
`
`

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`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/ Christopher G. Paulraj
`Christopher G. Paulraj
`Investigative 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)