UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before Honorable Charles E. Bullock
`Administrative Law Judge
`
`In the Matter of
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`Investigation No. 337-TA-626
`
`PHITEK SYSTEMS LIMITED AND CREATIVE LABS, INC.’S
`MOTION TO JOIN RESPONDENT AUDIO-TECHNICA’S MOTION FOR
`SUMMARY DETERMINATION THAT US PATENT 6,597,792 IS INVALID
`
`Pursuant to Commission Rules of Practice and Procedure § 210.15, Respondents Phitek
`
`Systems Limited (“Phitek”) and Creative Labs, Inc. (Creative US) hereby move to join the
`
`Motion for Summary Determination that US Patent 6,597,792 is Invalid (the “Motion”) filed by
`
`Respondent Audio-Technica U.S., Inc. (“Audio-Technica”) on April 29, 2008.
`
`Respondents Phitek and Creative move for summary determination against Bose pursuant
`
`to the United States International Trade Commission’s (“ITC’s”) Rules of Practice and
`
`Procedure, 19 C.F.R. § 210.18 and Rule 3.3 of the Court’s Ground Rules. Based on the prior art
`
`headphones of Audio-Technica, Claim 1 of U.S. Patent No. 6,597,792 (“792” patent) is invalid
`
`as anticipated due to the on-sale bar under 35 U.S.C. § 102(b), and Claim 2 of the patent is
`
`invalid as obvious under 35 U.S.C. § 103.
`
`In the ‘792 patent, Bose claims to have invented a headphone with a cushion (the part of
`
`the headphone that contact the ears or head when in use) having a “plurality of openings” in the
`
`interior of the cushion. These “plurality of openings” are alleged to have certain impacts on
`
`headphone performance. However, Audio-Technica sold such headphones having cushions with
`
`a “plurality of openings” more that ten years before Bose filed a patent application directed to
`
`this subject matter.
`
`5103140v.1 128214/00004
`
`1
`
`
`WASHINGTON, D.C.
`
`Before Honorable Charles E. Bullock
`Administrative Law Judge
`
`In the Matter of
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`Investigation No. 337-TA-626
`
`PHITEK SYSTEMS LIMITED AND CREATIVE LABS, INC.’S
`MOTION TO JOIN RESPONDENT AUDIO-TECHNICA’S MOTION FOR
`SUMMARY DETERMINATION THAT US PATENT 6,597,792 IS INVALID
`
`Pursuant to Commission Rules of Practice and Procedure § 210.15, Respondents Phitek
`
`Systems Limited (“Phitek”) and Creative Labs, Inc. (Creative US) hereby move to join the
`
`Motion for Summary Determination that US Patent 6,597,792 is Invalid (the “Motion”) filed by
`
`Respondent Audio-Technica U.S., Inc. (“Audio-Technica”) on April 29, 2008.
`
`Respondents Phitek and Creative move for summary determination against Bose pursuant
`
`to the United States International Trade Commission’s (“ITC’s”) Rules of Practice and
`
`Procedure, 19 C.F.R. § 210.18 and Rule 3.3 of the Court’s Ground Rules. Based on the prior art
`
`headphones of Audio-Technica, Claim 1 of U.S. Patent No. 6,597,792 (“792” patent) is invalid
`
`as anticipated due to the on-sale bar under 35 U.S.C. § 102(b), and Claim 2 of the patent is
`
`invalid as obvious under 35 U.S.C. § 103.
`
`In the ‘792 patent, Bose claims to have invented a headphone with a cushion (the part of
`
`the headphone that contact the ears or head when in use) having a “plurality of openings” in the
`
`interior of the cushion. These “plurality of openings” are alleged to have certain impacts on
`
`headphone performance. However, Audio-Technica sold such headphones having cushions with
`
`a “plurality of openings” more that ten years before Bose filed a patent application directed to
`
`this subject matter.
`
`5103140v.1 128214/00004
`
`1
`
`
`
`Accordingly, Claim 1 of the ‘792 patent is invalid under 35 U.S.C. § 102(b)(on-sale bar).
`
`Claim 2 of the ‘792 patent is invalid under 35 U.S.C. § 103 (obviousness) because the additional
`
`element included in Claim 2 (active noise-cancelling technology) was well known in prior art
`
`patents by Bose’s own admissions. Accordingly, it was obvious for one skilled in the art to take
`
`a known headphone design with cushions (such as that of Audio-Technica’s 1988 headphones)
`
`and combine this with known active headphone noise cancelling technology at the time of the
`
`‘792 patent.
`
`As explained more fully in Respondent Audio-Technica’s MOTION FOR SUMMARY
`
`DETERMINATION THAT U.S. PATENT 6,597,792 IS INVALID and Audio Technica’s MEMORANDUM
`
`IN SUPPORT OF MOTION FOR SUMMARY DETERMINATION, Bose cannot claim that it owns patent
`
`rights in a headphone cushion design that Audio-Technica has been selling since 1988. Such a
`
`claim is particularly egregious here, where Bose’s inventor had in his possession Audio-
`
`Technica’s product with a “plurality of openings” in the cushion more than 18 months before
`
`Bose filed the patent application that matured into the ‘792 patent.
`
`Accordingly, Phitek respectfully joins Audio-Technica’s April 29, 2008 MOTION FOR
`
`SUMMARY DETERMINATION THAT US PATENT 6,597,792 IS INVALID and requests the relief set
`
`forth therein.
`
`Dated: May 6, 2008
`
`Respectfully submitted,
`
`____/S/ William B. Nash___
`William B. Nash
`Daniel Chapman
`Mark A. J. Fassold
`JACKSON WALKER LLP
`112 E. Pecan, Suite 2400
`San Antonio, Texas 78205
`(210) 978-7700
`(210) 242-4620
`
`5103140v.1 128214/00004
`
`2
`
`
`
`Alan Cope Johnson
`G. Brian Busey
`Cynthia Beverage
`MORRISON & FOERSTER, L.L.P.
`2000 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006
`
`ATTORNEYS FOR PHITEK SYSTEMS LIMITED
`
`5103140v.1 128214/00004
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 6, 2006, a copy of
`
`RESPONDENT PHITEK SYSTEMS LIMITED AND CREATIVE LABS, INC.’S
`MOTION TO JOIN RESPONDENT AUDIO-TECHNICA’S MOTION FOR SUMMARY
`DETERMINATION THAT US PATENT 6,597,792 IS INVALID
`
`was served on the following as indicated:
`
`Marilyn R. Abbott
`Secretary
`U.S. International Trade Commission
`500 E. Street, S.W., Room 112A
`Washington, DC 20436
`
`6 copies
`
`The Honorable Charles E. Bullock
`Administrative Law Judge
`U.S. International Trade Commission
`500 E. Street, S.W., Room 317
`Washington, DC 20436
`
`2 copies
`
`Jennifer Whang
`Administrative Law Judge Attorney-Advisor
`
`1 electronic copy w/out attachments
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery (US Express Mail)
`
`Via Facsimile
`
`Via E-File
`
`Not Served
`
`Via First Class Mail (CM/RRR)
`
`Via Hand Delivery
`
`Via Overnight Delivery
`
`Via Facsimile
`
`Via Electronic Mail
`
`Not Served
`
`Via Electronic Mail
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Not Served
`
`5103140v.1 128214/00004
`
`4
`
`
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery (US Express Mail)
`
`Via Facsimile
`
`Via Electronic Mail
`
`Not Served
`
` Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery (US Express Mail)
`
`Via Facsimile
`
`Via Electronic Mail
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery
`
`Via Facsimile
`
`Via Electronic Mail
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery
`
`Via Facsimile
`
`Via Electronic Mail
`
`Christopher Paulraj
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E. Street, S.W. Room 401-F
`Washington, DC 20436
`
`2 copies
`
`Ruffin B. Cordell
`Andrew R. Kopsidas
`Jeffrey R. Whieldon
`FISH & RICHARDSON P.C.
`1425 K Street, N.W.
`Washington, DC 20005
`
`Attorneys for Complainant Bose Corporation
`
`Charles Hieken
`Gregory A. Madera
`Adam J. Kessel
`FISH & RICHARDSON P.C.
`225 Franklin Street
`Boston, MA 02 1 10
`
`Attorneys for Complainant Bose Corporation
`
`James P. White
`Gerald T. Shekleton
`J. Aron Carnahan
`Welsh & Katz Ltd.
`120 South Riverside Plaza, 22nd Floor
`Chicago, Illinois 60606
`
`Attorneys for Respondent Audio Technica,
`U.S. Inc.
`
`5103140v.1 128214/00004
`
`5
`
`
`
`Arthur Wineburg
`Daniel E. Yonan
`Akin Gump Strauss Hauer & Feld, LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036
`
`Attorneys for Respondent Audio Technica,
`U.S. Inc.
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery
`
`Via Facsimile
`
`Via Electronic Mail
`
`Tom M. Schaumberg
`Jamie D. Underwood
`Adduci, Mastriani & Schaumberg, LLP
`1200 Seventeenth Floor, NW, Fifth Floor
`Washington, DC 20036
`
`Attorneys for Panasonic Corporation of North
`America
`
`Daniel Ebenstein
`Abraham Kasdan
`Joseph Casino
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`
`Attorneys for Panasonic Corporation of North
`America
`Alan Cope Johnston
`G. Brian Busey
`Cynthia Lopez Beverage
`MORRISON FOERSTER
`2000 Pennsylvania Ave., NW
`Washington, D.C. 20006-1888
`
`Attorneys for Phitek Systems Limited and
`Creative Labs, Inc.
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery
`
`Via Facsimile
`
`Via Electronic Mail
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery
`
`Via Facsimile
`
`Via Electronic Mail
`
`Via First Class Mail
`
`Via Hand Delivery
`
`Via Overnight Delivery
`
`Via Facsimile
`
`Via Electronic Mail
`
`/s/ Mark A. J. Fassold___
`Mark A. J. Fassold
`
`5103140v.1 128214/00004
`
`6
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