UNITED STATES INTERNATIONAL TRADE COMMISSION
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`WASHINGTON, D.C.
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`In the Matter of
`CERTAIN NOISE CANCELLING
`HEADPHONES
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`Investigation No. 337-TA-626
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`Before the Honorable Charles E. Bullock
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`Administrative Law Judge
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`RESPONDENT AUDIO-TECHNICAS’ MOTION FOR SUMMARY
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`DETERMINATION THAT US PATENT 6,597,792 IS INVALID
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`Pursuant to the United States International Trade Commission’s (“ITC’s”) Rules
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`of Practice and Procedure, 19 C.F.R. §§ 210.18, and Rule 3.3 of this Court’s Ground
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`Rules, Respondent Audio-Technica U.S., Inc. (“Audio-Technica”), hereby moves for
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`summary judgment that claims 1 and 2 of U.S. Patent No. 6,597,792 is invalid under 35
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`U.S.C. §§ 102(b) and 103. As explained in the accompanying Memorandum in Support
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`of this Motion (filed herewith), Audio-Technica sold a number of headphone models
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`embodying every element of Claim 1 of the ‘792 patent more than a decade before Bose
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`claims to have invented the subject matter thereof, thus invalidating Claim 1 pursuant to
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`35 U.S.C. §102(b). Claim 2 (which is a combination of the elements of Claim 1 with
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`known noise-cancelling technology disclosed by Bose more than 20 years ago), is invalid
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`for obviousness pursuant to 35 U.S.C. §l03. For the reasons fully set forth in the
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`accompanying Memorandum filed herewith, Audio-Technica respectfully requests that
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`this Motion be granted.
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`RULE 3.2 CERTIFICATION
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`Pursuant to this Court’s Ground Rule No. 3.2, the undersigned counsel hereby
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`certifies that Respondents have made reasonable, good-faith efforts to contact and resolve
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`the matter raised in this motion with Bose on April 24 and 25, 2008, and Bose will
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`oppose the motion.
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`DATED: APRIL 29, 2008
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`RESPECTFULLY SUBMITTED,
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`WELSH & KATZ, LTD.
`120 South Riverside Plaza, 22nd Floor
`Chicago, Illinois 60606
`(312) 655-1500
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`Arthur Wineburg
`Daniel E. Yonan
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`Akin Gump Strauss Hauer & Feld, LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036
`(202) 887-4000
`Attorneysfor Audio-Technica U.S., Inc.
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`

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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
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`
`
`In the Matter of
`CERTAIN NOISE CANCELLING
`HEADPHONES
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`Before the Honorable Charles E. Bullock
`Administrative Law Judge
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`Investigation No. 337-TA-626
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`RESPONDENT AUDIO-TECHNICA’S MEMORANDUM IN
`SUPPORT OF MOTION FOR SUMMARY DETERMINATION
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`James P. White
`J. Aron Carnahan
`WELSH & KATZ, LTD.
`120 South Riverside Plaza, 22nd Floor
`Chicago, Illinois 60606
`(312) 655-1500
`
`Arthur Wineburg
`Daniel E. Yonan
`Akin Gump Strauss Hauer & Feld, LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036
` (202) 887-4000
`Attorneys for Audio-Technica U.S., Inc.
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`April 29, 2008
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`TABLE OF CONTENTS
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`Introduction..........................................................................................................................1
`Undisputed Facts..................................................................................................................2
`Argument .............................................................................................................................4
`I. Claim 1 Of The ‘792 Patent Is Invalid Under 35 U.S.C. §102.............................5
`A. Bose’s Own Interpretations Of Claim 1 Demonstrate Invalidity.................6
`B. Audio-Technica’s Prior Art Headphones (On Sale in 1988)
`Have Every Element Present In Claim 1 .....................................................7
`1. There Is No Dispute That Audio-Technica’s Prior Art
`Headphones Are “Headsets” with an “Earcup,” “Front Opening,”
`“Driver,” and “Cushion”........................................................................7
`2. Audio-Technica’s Prior Art “Cushions” Have the
`“Plurality of Openings” Required by Claim 1 .......................................9
`3. Bose’s Admissions Demonstrate The Remaining Element
`of Claim 1 Is Inherent In The Prior Art ..............................................11
`a. Admissions In Bose’s ‘792 Patent Show The Presence
`of a “Plurality of Openings” in the Prior Art .................................11
`b. Bose’s Analysis of the ATH-ANC7 Shows the Presence
`Of a “Plurality of Openings” in the Prior Art ................................13
`II. Claim 2 of the ‘792 Patent Is Invalid Because It Would Have Been
`Obvious To One Of Ordinary Skill In The Art At The Time Of Invention.....16
`A. Claim 2 of the ‘792 Patent Covers A Combination of
` Known Elements.......................................................................................17
`B. Scope and Content of Prior Art (First Graham Factor) .............................18
`1.
`Audio-Technica’s Prior Art Headphones
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`Disclose Every Element of Claim 1...............................................18
`2.
`Bose’s Prior Art ‘675 Patent Discloses
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`All Additional Elements of Claim 2 ............................................18
`3.
`Bose’s Prior Art ‘581 Patent Also
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`Discloses Additional Elements of Claim 2 ....................................20
`4.
`Any Remaining Elements of Claim 2 Are
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`Also Present in the Prior Art..........................................................23
`C. Level of Ordinary Skill in the Art..............................................................24
`D. No Differences Exist Between Prior Art and Claim 2...............................24
`E. Combining Known Headphone Cushions With Known
` Active Noise Reducing Elements Is Obvious............................................27
`F. Any Secondary Considerations Relating To Obviousness
`Do Not Counteract The Strong Showing Of Obviousness Here................27
`III. The Inventor Of The ‘792 Patent Had Possession of Audio-Technica
` Headphones With The Elements Of Claim 1 Before “Inventing”
` The Subject Matter of the Patent ..........................................................................28
`Conclusion .........................................................................................................................30
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`i
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`INTRODUCTION
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`Respondent Audio-Technica U.S., Inc. (“Audio-Technica,” “Movant,” or “Respondent”)
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`moves for summary determination against Bose pursuant to the United States International Trade
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`Commission’s (“ITC’s”) Rules of Practice and Procedure, 19 C.F.R. §§ 210.18, and Rule 3.3 of
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`this Court’s Ground Rules. Based upon the prior art headphones of Movant, Claim 1 of U.S.
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`Patent No. 6,597,792 (“‘792 patent”) is invalid as anticipated due to the on-sale bar under 35
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`U.S.C. § 102(b), and claim 2 of the patent is invalid as obvious under 35 U.S.C. § 103.
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`In the ‘792 patent, Bose claims to have invented a headphone with a cushion (the part of
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`the headphone that contacts the ears or head when in use) having a “plurality of openings” in the
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`interior of the cushion. These “plurality of openings” are alleged to have certain impacts on
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`headphone performance. However, Audio-Technica sold such headphones having cushions with
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`a “plurality of openings” more than ten years before Bose filed a patent application directed to
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`this subject matter.
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`Accordingly, Claim 1 of the ‘792 patent is invalid under 35 U.S.C. §102(b)(on-sale bar).
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`Claim 2 of the ‘792 patent is invalid under 35 U.S.C. § 103 (obviousness) because the additional
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`element included in Claim 2 (active noise-canceling technology) was well known in prior art
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`patents by Bose’s own admissions. Accordingly, it was obvious for one skilled in the art to take
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`a known headphone design with cushions (such as that of Audio-Technica’s 1988 headphones)
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`and combine this with known active headphone noise-cancelling technology at the time of the
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`‘792 patent.
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`As explained more fully below, Bose cannot claim that it owns patent rights in a
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`headphone cushion design that Audio-Technica has been selling since 1988. Such a claim is
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`particularly egregious here, where Bose’s inventor had in his possession Audio-Technica’s
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`1
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`product with a “plurality of openings” in the cushion more than 18 months before Bose filed the
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`patent application that matured into the ‘792 patent.1
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`UNDISPUTED FACTS
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`Respondents’ Rule 3.3 complete statement of undisputed material facts that are sufficient
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`to invalidate the asserted claims as a matter of law is filed herewith and incorporated by
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`reference. A brief overview of the more pertinent facts is presented below.
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`Audio-Technica, headquartered in Stow, Ohio, designs and sells professional audio
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`equipment. (Audio-Technica’s Rule 3.3 Statement of Material Facts at ¶¶ 14-15, filed herewith,
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`hereinafter “SMF”). Audio-Technica has been selling high quality audio products in the United
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`States for more than 30 years. (Id. at ¶ 15.) Audio-Technica’s product line includes professional
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`microphones, electronics for use with professional audio equipment, headphones, and other
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`ancillary audio products. (Id. at ¶ 16.) Audio-Technica conducts significant research and
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`development in the field of professional audio equipment in the United States through its
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`engineering staff in Ohio. (Id. at ¶ 17.) Audio-Technica has sold headphones in the United
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`States for nearly thirty years.2 (Id. at ¶ 18.)
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`In 1988, Audio-Technica began selling headphone models ATH-909, ATH-910, and
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`ATH-911 in the United States. (SMF ¶ 19.) Audio-Technica began selling the ATH-908 at
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`least as early as 1990. (SMF ¶ 20.) All of these products are prior art to the ‘792 patent. (SMF
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`¶22.) Price lists showing these products on sale in 1988 and later, as well as sample
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`advertisements for such products from this same time period, are attached as Exhibits 1A and 1B
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`to Audio-Technica’s Rule 3.3 SMF (filed herewith). (SMF ¶¶21, 23.)
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`1 In filing this motion, Audio-Technica reserves the right to assert all other grounds of invalidity and
`unenforceability in these proceedings.
`2 Although Audio-Technica has a long history of designing and making headphones, Audio-Technica’s
`accused infringing headphone (the ATH-ANC7) is manufactured by Respondent Phitek.
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`2
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`Each of Audio-Technica’s prior art products designated ATH-908, ATH-909, ATH-910,
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`and ATH-911 have cushions that contact the head and/or ear of a user and allow the headphone
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`to be comfortably placed on or around the ear. (SMF ¶ 28.) Each such cushion consists of an
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`open cell foam material surrounded by an outer covering. (Id. at ¶ 29.) The cushions for each of
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`these Audio-Technica headphones have numerous openings in the cushion covering that expose
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`the interior foam of the headphone. (Id. at ¶¶30-33.) Photographs of the various representative
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`headphones and the corresponding cushions are shown below and attached as Exhibits 1C-F:
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`ATH-908 (Exhibit 1C)
`On Sale in US 1990
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`ATH-909 (Exhibit 1D)
`On Sale in US 1988
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`ATH-910 (Exhibit 1E)
`On Sale in US 1988
` (SMF ¶ 30.)
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`ATH-911 (Exhibit 1F)
`On Sale in US 1988
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`On July 15, 1999, Bose filed a patent application that later issued as the ’792 patent.
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`(SMF ¶¶4-5.) The ‘792 patent is in reissue proceedings now in the Patent Office, and all claims
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`3
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`of the ‘792 patent stand rejected pursuant to an Office Action dated February 29, 2008.3 (SMF
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`¶8.)
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`Two claims of the ‘792 patent are asserted against Respondents here. Claim 1 relates to
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`the design of cushions used on headphones, while Claim 2 is a combination of the cushions of
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`Claim 1 with known noise-cancelling technology. (SMF ¶¶2, 7.) The known noise-cancelling
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`technology of Claim 2 was previously disclosed by Bose in now-expired patents 4,455,675 (“the
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`‘675 Patent”)(Exhibit 7) and 4,644,581 (“the ‘581 Patent”)(Exhibit 8), which patents are prior art
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`to Bose’s patent-in-suit. (SMF ¶¶62-79.)
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`ARGUMENT
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`Summary determination is appropriate when there is no genuine issue as to any material
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`fact and the moving party is entitled to a determination as a matter of law. 19 C.F.R. § 210.18(b).
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`Once the party moving for summary judgment sets forth the basis for its motion and
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`demonstrates the absence of a triable issue, the nonmoving party must then demonstrate “specific
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`facts showing that there is a genuine issue for trial” in order to avoid the entry of judgment
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`against it. Celotex Corp. v. Catrett, 477 U.S. 317, 322 n.3 (1986.)
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`Summary determination of invalidity is proper in the ITC when a patent’s claims are
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`shown to be anticipated and/or obvious in light of the prior art. See, e.g., KSR Int’l Co. v.
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`Teleflex Inc., 127 S. Ct. 1727, 1745-46 (2007) (“Where . . . the obviousness of the claim is
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`apparent . . . summary judgment is appropriate.”) See also Hazani v. U.S. Intern. Trade Com'n,
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`126 F.3d 1473, 1479 (Fed. Cir. 1997)(affirming ITC’s grant of summary judgment of patent
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`invalidity for anticipation); Bristol-Meyers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368,
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`3 The PTO rejected all claims in the ‘792 reissue proceeding for a variety of reasons, including
`obviousness. (SMF ¶ 8.) Notwithstanding the rejections of every claim of the ‘792 patent, Bose persists
`in its attempts to enforce the ‘792 patent against Respondents in these proceedings.
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`4
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`1378 (Fed. Cir. 2001) (affirming summary judgment that method for treating cancer patients
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`with a combination of medications was invalid as anticipated); and In the Matter of Certain
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`Vehicle Security Systems and Components Thereof, 1994 ITC LEXIS 765, *36 (ITC Sept. 1994)
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`(granting summary judgment for respondent in Section 337 investigation under on-sale bar
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`provisions of Section 102 where a third party sold a product embodying all claim elements
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`before the critical date for the patent in suit.) Where, as here, the references and invention at
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`issue are easily understandable, there is no need for expert explanatory testimony. Union
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`Carbide Corp. v. American Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984.)
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`I.
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`CLAIM 1 OF THE ‘792 PATENT IS INVALID UNDER 35 U.S.C. §102
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`Under Section 102(b) of the patent statute, a patent is invalid if the invention claimed was
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`on sale in the United States more than a year before the patent’s application date:
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`A person shall be entitled to a patent unless—
`* * *
`(b) the invention was patented or described in a printed publication in this or a
`foreign country or in public use or on sale in this country, more than one year
`prior to the date of the application for patent in the United States.
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`35 U.S.C. § 102(b.) An invention is “anticipated” (and thus unpatentable) when a single prior art
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`reference “discloses, either expressly or inherently, each limitation of the claim.” In re
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`Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002.) “A party challenging a patent
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`on the basis of an on-sale bar must demonstrate by clear and convincing evidence that there was
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`a definite sale or offer to sell more than one year before the application for the patent, and that
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`the product sold or offered for sale anticipated the claimed invention or rendered it obvious.” In
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`the matter of Certain Ammonium Octamolybdate Isomers, 2004 ITC LEXIS 105 *63 (Int’l Trade
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`Com. Jan. 2004.)
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`5
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`The “critical date” for measuring the “in public use or on sale” status of the prior art for
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`purposes of both 35 U.S.C. §§ 102 and 103 is July 15, 1998, one year before Bose filed the
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`application that resulted in the ‘792 Patent. (SMF ¶4.) In re Epstein, 32 F.3d 1559, 1564 (Fed.
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`Cir. 1994.) As explained below, Audio-Technica had prior art headphones that embodied every
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`single element of claim 1 of the ‘792 patent on sale almost a decade before the “critical date” of
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`the ‘792 patent. These headphones thus invalidate claim 1 of the ‘792 patent under 35 U.S.C.
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`§102(b).
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`A.
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`Bose’s Own Interpretations Of Claim 1 Demonstrate Invalidity
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`Claim 1 of the ‘792 patent claims the following elements:
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`(3)
`(4)
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`(1) a headset comprising:
`an earcup having a front opening adapted to be adjacent to the ear
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`(2)
`of the user,
`a driver inside said earcup,
`a cushion around the periphery of said front opening formed with
`an ear opening constructed and arranged to accommodate the ear
`of a user and formed with a plurality of openings around said
`opening constructed and arranged to acoustically add the volume
`of said cushion to the volume of said earcup and enhance passive
`attenuation.
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`(SMF ¶7, emphasis added.) Bose has set forth an element-by-element analysis of claims 1 and 2
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`of the ‘792 patent that describes how the patent applies to Bose’s own product. (SMF ¶9, exhibit
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`4.) Bose similarly submitted an element-by-element analysis of claims 1 and 2 of the ‘792 patent
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`as Bose claims it applies to Audio-Technica’s accused ATH-ANC7 product here. (SMF¶¶ 11-
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`12, exhibit 5.) Bose also submitted proposed definitions of claim elements at issue here (SMF
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`¶10, exhibit 6.) While Audio-Technica does not necessarily agree with Bose's contentions, any
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`differences are of no consequence to this motion because even under Bose's own claim charts,
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`definitions of patent terms, and contentions in this case, the ‘792 patent claims are invalid.
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`6
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`B. Audio-Technica’s Prior Art Headphones (On Sale in 1988) Have Every Element
`Present In Claim 1
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`As fully set forth in Audio-Technica’s Statement of Facts (submitted herewith), Audio-
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`Technica made and sold numerous prior art headphone models (including ATH-908, ATH-909,
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`ATH-910, ATH-910PRO, and ATH-911) with cushions that meet every limitation of Claim 1.
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`These headphones were on sale in the United as much as a decade before Bose filed the ’792
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`patent application. One representative sample of such headphones, the ATH-910 (first offered
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`for sale in the US in 1988) is analyzed in detail below. The other Audio-Technica models have
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`similarly constructed cushions and the analyses and conclusions are the same.
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`1.
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`There Is No Dispute That Audio-Technica’s Prior art Headphones
`Are “Headsets” with an “Earcup,” “Front Opening,” “Driver,” and
`“Cushion”
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`Pursuant to Bose’s own contentions and constructions of the terms of the ‘792 patent in
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`this case, there can be no dispute that the prior art model ATH-910 earphones constitute a
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`“headset” with an “earcup,” “front opening,” “driver,” and “cushion” as the ‘792 patent uses
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`these terms. (SMF ¶¶37-50.) Below is a summary of Bose’s interpretations of the relevant claim
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`elements on the left with the corresponding claim elements from Audio-Technica’s prior art
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`headphones shown for comparison on the right.
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`7
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`Claim Element “Headset”4
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`Bose’s Identification of “Headset”
`(Exhibit 5)
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`Prior Art ATH-910 “Headset” From 1988
`(Exhibit 1E)
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`Headset
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`(SMF ¶39.)
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`Claim Elements: “Earcup,”5 “Cushion,”6 “Front Opening”7
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`Bose’s Identification Of Claim Elements
`(Exhibit 4)
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`Audio-Technica’s 1998 Model ATH-910
`(Exhibit 1E)
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`earcup
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`front
`opening
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`ear
`opening
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`cushion
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`(SMF ¶45.)
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`4 Audio-Technica’s prior art clearly meets Bose’s own definition of “headset” in this case, which is: “a
`receiver that fits on a head having two earcups with earphones that convert electrical signals into sounds.”
`(SMF ¶37.)
`5 Bose defines “earcup” in this case as “the portion of the headset configured to fit on or around the ear,”
`a limitation present in Audio-Technica’s prior art headphones. (SMF ¶42.)
`6 Bose defines “cushion” in this case as “a pad stuffed with a soft material such as foam,” an element also
`present in the Audio-Technica prior art shown herein. (SMF ¶¶43, 46.)
`7 Bose offers no definition of “front opening” it its claim chart (Exhibit 6), but there can be no dispute that
`Audio-Technica’s prior art headphones have a front opening as identified by Bose here. (SMF ¶¶ 45, 46.)
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`8
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`Claim Element: “Driver”8
`Bose’s Identification of Claim Elements
`Audio-Technica’s 1988 Model ATH-910
`(Exhibit 4)
`(Exhibit 1E)
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`earcup
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`driver
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`(SMF ¶49.)
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`2.
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`Audio-Technica’s Prior Art “Cushions” Have the “Plurality of
`Openings” Required by Claim 1
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`The Audio-Technica prior art model ATH-910 also has the Claim 1 limitation of a
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`cushion “formed with a plurality of openings around the opening.” In this case, Bose defines
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`“opening” as “an aperture or gap,” and “plurality” as “more than one opening.” (SMF ¶51.) By
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`Bose’s own definition, Audio-Technica’s 1988 prior art possesses the “plurality of openings” in
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`the headphone cushions as shown at the top of the next page (i.e., “more than one aperture or
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`gap”):
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`8 Audio-Technica’s prior art also has a “driver” by Bose’s own definition, which is “an electromechanical
`transducer that converts an electrical signal into sound.” (SMF ¶¶47,501).
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`9
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`Claim Element: Cushion with a “Plurality of Openings”
`Bose’s Identification of “Cushion” and
`Audio-Technica’s 1988 ATH-910 with
`“Plurality of Openings” (Exhibit 4)
`“Cushion” and “Plurality of Openings”
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`(Exhibit 1E)
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` cushion
` cushion
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`ear opening
`ear opening
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`plurality of openings
`plurality of openings
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`(Exhibit 1E, SMF ¶¶31-32, 52-53.)
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`A variety of other prior art Audio-Technica headphones from as early as 1988 similarly
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`possess the Claim 1 limitation of a “plurality of openings” (as defined by Bose) in the headphone
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`cushions. (SMF at ¶¶33-36, 55-56.) For example, the Audio-Technica ATH-909 and ATH-911
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`headphones have cushions similar to the ATH-910 discussed above, while the ATH-910PRO (on
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`sale in the US in 1995) and the ATH-908 (on sale in the US in 1990) have a different variation of
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`cushion design with larger openings in the cushion, as shown below. (SMF ¶¶33-34.)
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`Additional Audio-Technica Prior Art Cushions With “Plurality Of Openings”
`ATH-909 Cushion
`ATH-911 Cushion
`ATH-908 Cushion
`ATH-910PRO
`(On Sale 1988)
`(On Sale 1988)
`(On Sale 1990)
`(On sale 1995)
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`(SMF ¶ 33.)
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`10
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`Each of the above-referenced headphones sold by Audio-Technica shows the market
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`presence of “headsets” with an “earcup,” “front opening,” “driver,” and “cushion” having a
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`“plurality of openings” well before Bose claims to have invented such features.
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`3.
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`Bose’s Admissions Demonstrate The Remaining Element of Claim 1 Is
`Inherent In The Prior Art
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`a.
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`Admissions In Bose’s ‘792 Patent Show The Presence of
`a “Plurality of Openings” in the Prior Art
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`The only remaining limitation in Claim 1 is that the required “plurality of openings” are
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`“constructed and arranged to acoustically add the volume of said cushion to the volume of said
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`earcup and enhance passive attenuation.” (SMF¶7.)
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`Bose admits in its ‘792 patent that this claim element is the natural result flowing from
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`“forming openings” in headphone cushions.
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`By forming openings in annular ridge 16 of cushion 15 to expose foam material 15B,
`the effective volume of the earcup is significantly increased to embrace the volume
`occupied by cushion 15 and thereby increase passive attenuation and provides
`additional damping to help smooth the audio response at the ear and control stability
`with the headset off the head.
`(SMF ¶ 57.)
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`Accordingly, the claim 1 element of “acoustically add[ing] the volume of said cushion to
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`the volume of said earcup and enhanc[ing] passive attenuation” is necessarily present in Audio-
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`Technica’s prior art cushions due to the presence of openings in these cushions that expose the
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`underlying foam of the cushion.9 (SMF ¶60).
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`9 To the extent Bose claims that it is the first to have described noise-attenuating impacts of having
`openings in headphone cushions, this is of no consequence to the invalidity of the patent claims in light of
`the prior art. EMI Group NA Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342 (Fed. Cir. 2001)
`(“Recitation of a law of nature does not distinguish a claim from the prior art.”). See also Atlas Powder,
`190 F.3d at 1347 ("The discovery of a previously unappreciated property of a prior art composition, or of
`a scientific explanation for the prior art's function, does not render the old composition patentably new to
`the discoverer.")
`
`
`
`11
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`

`
`“Under the principles of inherency, if the prior art necessarily functions in accordance
`
`with, or includes, the claimed limitations, it anticipates.” MEHL/Biophile Int'l Corp. v.
`
`Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). “A limitation or the entire invention is
`
`inherent and in the public domain if it is the ‘natural result flowing from’ the explicit disclosure
`
`of the prior art.” Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003);
`
`see also, Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (“The
`
`anticipation doctrine examines the natural and inherent results in that method without regard to
`
`the full recognition of those benefits or characteristics within the art field at the time of the prior
`
`art disclosure.”). Inherent anticipation does not require that those of ordinary skill in the art
`
`recognize the inherent characteristics or functioning of the prior art. Id at 1376 (“Artisans of
`
`ordinary skill may not recognize the inherent characteristics or functioning of the prior art.”);
`
`accord, MEHL/Biophile, 192 F.3d at 1365; Schering, 339 F.3d at 1377 (“[I]nherent anticipation
`
`does not require that a person of ordinary skill in the art at the time would have recognized the
`
`inherent disclosure.”).
`
`
`
`Because inherency places subject matter in the public domain (just as does express
`
`disclosure), the inherent properties of the openings of the prior art headphone covers of the ATH-
`
`908, 909, 910, and 911 anticipate this element of Claim 1. See Abbott Lab. v. Geneva Pharms.,
`
`Inc., 182 F.3d 1315, 1319 (Fed. Cir. 1999) (Where a product is sold that inherently possesses
`
`each claim limitation “the invention is on sale, whether or not the parties to the transaction
`
`recognize that the product possesses the claimed characteristics.”).
`
`
`
`12
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`

`
`b.
`
`Bose’s Analysis of the ATH-ANC7 Shows the Presence Of
`a “Plurality of Openings” in the Prior Art
`
`
`Bose’s own infringement analysis applied to the accused Audio-Technica ATH-ANC7
`
`demonstrates the presence of a “plurality of openings” in the Audio-Technica prior art cushions.
`
`Bose claims that the cushions on Audio-Technica’s current ATH-ANC7 product have a
`
`“plurality of openings” required by the ‘792 patent due to the presence of a “breathable cloth
`
`material” located around the inner periphery of the ATH-ANC7 cushion. (SMF ¶54.)
`
`Specifically, Bose sets forth the following analysis of Audio-Technica’s accused ATH-ANC7 in
`
`its infringement claim chart from this case:
`
`Bose’s Claims of Infringement Regarding
`Audio-Technica’s ATH-ANC7 (Exhibit 5)
`
`
`
`(SMF ¶ 54.)
`
`
`A visual comparison of Bose’s infringement claims (below on the left) with the prior art
`
`(on the right) shows the presence of the claimed “plurality of holes” in Audio-Technica’s 1988
`
`prior art:
`
`
`
`13
`
`

`
`1988 ATH-910 Cushion Showing The
`Plurality of Openings (Exhibit 6)
`earcup
`
`front opening
`
`plurality of
`openings
`
`
`
`
`
`
`Bose’s Claim Chart Alleging Infringement
`of the ATH-ANC7 (Exhibit 5)
`
`
`
`(SMF ¶ 55.)
`
`Moreover, the “breathable cloth material” found in the current ATH-ANC7 product
`
`(which Bose claims to be infringing) was also present in the prior art. The prior art ATH-908
`
`(on sale in 1990) and ATH-909 product (on sale in 1988) both have a breathable cloth material
`
`on their respective headphone cushions similar to the cloth material Bose claims to be infringing
`
`on the ATH-ANC7. (SMF ¶¶35-36.) Notably, the prior art ATH-908 has a mesh-type material
`
`(visibly very similar to that in the accused ATH-ANC7), and the prior art ATH-909 has a similar
`
`breathable material with a softer appearance, as shown below:10
`
`
`
`
`10 Indeed, the ATH-909 combines two types of “plurality of holes:” (1) a “breathable cloth material” on
`the top of the cushion; and (2) a myriad of larger openings on the bottom side of the cushion. (SMF ¶35-
`36.)
`
`
`
`14
`
`

`
`
`
`Prior Art Audio-Technica Cushions
`with “Breathable Cloth Material”
`ATH-908 (1990)
`ATH-909 (1988)
`(showing “breathable cloth material” on the
` (showing “breathable cloth material”
`cushion surface)
`and visible holes in the cushion)
`
`
`
`
`
`(Exhibits 1C & 1G, SMF ¶¶35-36.)
`
`Bose’s claim that the “breathable cloth material” of Audio-Technica’s current ATH-
`
`ANC7 product constitutes a “plurality of holes” for purposes of infringement is an express
`
`admission that the presence of the same feature in the prior art reads on (and thus invalidates)
`
`Bose’s patent. See Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir.
`
`1987.)(“That which would literally infringe if later in time anticipates if earlier than the date of
`
`invention.”) Accordingly, the presence of the “breathable cloth material” in the prior art ATH-
`
`908 and ATH-909 is fatal to Bose’s patent claims here where such prior art features are now said
`
`by Bose to meet the ‘792 patent’s limitation of a “plurality of small holes or openings that
`
`acoustically add the volume of the cushion to the volume of the earcup and enhance passive
`
`attenuation.” (SMF ¶54-61.)
`
`
`
`15
`
`

`
`Because the 1988 Audio-Technica headphone models ATH-908, ATH-909, ATH-910
`
`and ATH-911 meet each limitation of claim 1 of the ‘792 patent (as interpreted by Bose),
`
`summary judgment should be granted in connection with this claim. See Bristol-Meyers Squibb
`
`Co., 246 F.3d at 1377-78 (affirming summary judgment where patent was invalid as anticipated.)
`
`II.
`
`
`
`CLAIM 2 OF THE ‘792 PATENT IS INVALID BECAUSE IT WOULD HAVE BEEN OBVIOUS
`TO ONE OF ORDINARY SKILL IN THE ART AT THE TIME OF INVENTION
`
`A patent can also be invalid if all of the elements of a claimed invention are found in a
`
`combination of prior art references, as is the case with Claim 2 of Bose’s ‘792 patent. Section
`
`103 bars patentability “if the differences between the subject matter sought to be patented and
`
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a). If a patent
`
`issues on such a claimed invention, that patent is invalid for “obviousness.” The question of
`
`obviousness is ultimately one of law. Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289
`
`(Fed. Cir. 2006).
`
`The Supreme Court recently re-examined the obviousness doctrine in the context of
`
`“combination” patents, like claim 2 of the ’792 patent, in which a company seeks to patent the
`
`combination of two previously known products or features. KSR Int’l Co., 127 S. Ct. 1727
`
`(2007). The Court cautioned that “common sense directs one to look with care at a patent
`
`application that claims as innovation the combination of two known devices according to their
`
`established functions” and that the “combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.” Id. at 1739,
`
`1741.
`
`The Supreme Court in KSR reaffirmed that the determining facts underlying obviousness
`
`were previously identified in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966): (1) the scope
`
`
`
`16
`
`

`
`and content of the prior art; (2) the level of ordinary skill in the art; (3) differences between the
`
`prior art and the claims; and (4) where appropriate, secondary considerations of obviousness
`
`such as commercial success. KSR Int’l Co., 127 S. Ct. at 1734, 1739. Here summary
`
`determination should be granted because, as set forth below, consideration of the relevant
`
`Graham factors as the Supreme Court would have them applied compels a conclusion of
`
`obviousness as a matter of law. See id. at 1745–46.
`
`A.
`
`Claim 2 of the ‘792 Patent Covers A Combination of Known Elements
`
`In 1999, less than two years before Bose's patent term on a previous patent covering
`
`active noise cancelling technology was set to expire (U.S. 4,455,675), Bose filed the patent
`
`application that matured into the '792 patent in issue. (See SMF¶¶4, 62.) Claim 2 of the ‘792
`
`patent covers the addition of the known earph