UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, D.C. 20436
`
`Before Honorable Charles E. Bullock
`
`Administrative Law Judge
`
`In the Matter of -
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`
`
`Investigation No. 337-TA-626
`
`COMPLAINANT BOSE CORPORATION’S OPPOSITION
`
`PURSUANT TO COMMISSION RULE 210.18(d) TO
`RESPONDENT AUDIO-TECHNICA’S MOTION FOR
`
`SUMMARY DETERMINATION THAT U.S. PATENT NO. 6,597,792 IS INVALID
`
`Respondent Audio-Technica, n Inc. ’s Motion for Summary Determination that U.S.
`
`Patent 6,597,792 is Invalid (“Audio-Technica’s Motion”) is premature because discovery
`
`essential to the facts at issue in Audio-Technica’s Motion has not occurred. Pursuant to
`
`Commission Rule 210.18(d), Complainant Bose Corporation (“Bose”) respectfully requests that
`
`the Administrative Law Judge either deny Audio-Technica’s Motion or extend the time within
`
`which Bose must respond to the motion to July 9, 2008, ten (10) business days after the close of
`
`expert discovery.1
`
`1.
`
`APPLICABLE LAW
`
`Summary determination is appropriate “ifpleadings and any depositions, answers to
`
`interrogatories, admissions on file, together with affidavits, if any, show that there is no genuine
`
`issue as to material fact and that the moving party is entitled to a summary determination as a
`matter of law.’’ 19 n § 210.18. The moving party bears the initial burden to demonstrate
`
`that there are no genuine issues of material facts and that it is entitled to judgment as a matter of
`
`On May 6, 2008, Respondents Phitek Systems Limited (New Zealand) and Creative Labs, Inc. joined
`1
`Audio-Technica’s Motion. To the extent a response is necessary, this Opposition serves as Bose’s Opposition to
`Phitek’s motion for summary determination as well.
`
`

`
`law. Certain Optical Disk Controller Chips and Chipsets and Products Containing Same,
`
`Including DVD Players and PC Optical Storage Devices, Inv. No. 337-TA-506, Order No. 24 at
`
`3 (Nov. 18, 2004). In deciding a motion for summary determination, “all of the nonmovant’s
`
`evidence is to be credited, and all justifiable inferences are to be drawn in the nonmovant’s
`
`favor.” Xerox Corp. v. 3Com Corp., 267 F.3d 1361, 1364 (Fed. Cir. 2001). Summary
`
`determination is not appropriate “where an issue as to a material fact cannot be resolved without
`
`observation of the demeanor of witnesses in order to evaluate their credibility.” Sandt
`
`Technology, Ltd. v. Resco Metal Plastics Corp., 264 F.3d 1344, 1357 (Fed. Cir. 2001) (Judge
`
`Dyk, concurring).
`
`A patent is presumed valid under 35 U.S.C. § 282 and clear and convincing evidence of
`
`invalidity is required to overcome this presumption. Dana Corp. v. American Axle & Mgf, Inc. ,
`
`279 F.3d 1372, 1375 (Fed. Cir. 2002). The evidentiary burden on a party is the same for a
`
`motion for summary determination as it is for trial. See Monarch Knitting Machinery Corp. v.
`
`Sulzer Morat GmbH, 139 F.3d 877, 880 — 881 (Fed. Cir. 1998) (stating that for summary
`
`judgment motions, the court must “view the evidence presented through the prism of the
`
`«substantive evidentiary burden that would inhere at trial” (quoting Anderson v. Liberty Lobby,
`
`Inc., 477 U.S. 242, 254 (1986)).
`
`In other Words, summary determination should be granted only
`
`when the totality of the evidence, viewed in the light most favorable to the nonrnovant, could not
`
`lead a rational trier of fact to find for the non-moving party. Matsushita Elec. Indus. Co., Ltd. v.
`
`Zenith Radio Corp., 475 U.S. 574, 587 ~ 588 (1986).
`
`The purpose of summary determinations is to avoid unnecessary trial, not to deprive a
`
`litigant of a fair hearing. See Celotex Corp. v. Catrett, 477 U.S. 317, 326 (1986). Consistent
`
`with that purpose, Rule 210.18(d), 19 C.F.R. § 210.18(d), provides:
`
`BOSE’S MOTION PURSUANT TO COMMISSION RULE 210. 1 8(d)——PAGE 2
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`

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`Should it appear from affidavits of a party opposing the motion
`that the party cannot, for reasons stated, present by affidavit facts
`essential to justify the party’s opposition, the administrative law
`judge may refuse the application for summary determination, or
`may order a continuance to permit affidavits to be obtained or
`depositions to be taken or discovery to be had or may make such
`other order as is appropriate, and a ruling to that effect shall be
`made a matter of record.
`
`Rule 2lO.l8(d) corresponds to Fed. R. Civ. P. 56(f), whichisafelguards parties from attempts to
`
`railroad decisions on dispositive motions by denying the opposing party the meaningful
`
`opportunity to respond. See Celotex, 477 U.S. at 326; see also Anderson, 477 U.S. at 250 n.5
`
`(stating that Fed. R. Civ. P. 56(f) should be applied “where the nonmoving party has not had the
`
`opportunity to discover information that is essential to his opposition”). Denial of summary
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`determination or providing for an extension of time to respond until necessary discovery is
`
`completed pursuant to Rule 210. 1 8(d) has been routinely granted. See Certain Condensers,
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`Parts Thereofand Products Containing Same, Including Air Conditioners for Automobiles, Inv.
`
`No. 337-TA-334, Order No. 12 (April 27, 1999); Certain Digital Satellite System (DSS)
`
`Receivers and Components Thereof, Inv. No. 337-TA-392, Order No. 17 (March 24, 1997);
`
`Certain Programmable Logic Devices and Products Containing Same, Inv. No. 337-TA-453,
`
`Order No. 6 (June 4, 2001).
`
`II.
`
`ARGUMENT
`
`Audio-Technica asserts that (1) claim 1 of the ‘792 patent is invalid because it is
`
`anticipated under 35 U.S.C. § lO2(b) (see Respondent Audio-Technica’s Memorandum in
`
`Support of Motion for Summary Determination (“Audio-Technica Memo”), Sect. D and (2)
`
`claim 2 of the ‘792 patent is invalid because it is obvious under 35 U.S.C. § 103 (see Audio-
`
`Technica Memo, Sections II and III). Bose believes that Audio-Technica’s motion fails to
`
`BOSE’S MOTION PURSUANT TO COMMISSION RULE 210. I 8(d)—PAGE 3
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`

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`provide the clear and convincing evidence necessary to overcome the presumption that the ‘792
`
`patent is valid. However, Bose is unable to present all of the facts essential to justify its position
`
`because fact and expert discovery have not been completed, and because numerous disputed
`
`facts lie solely within Audio-Technica’s possession since it is Audio-Technica’s products that
`
`form the basis of the motion. Therefore, pursuant to Rule 2l0.l8(d), Audio-Technica’s motion
`
`should be denied or continued until the close of fact and expert discovery.
`
`A.
`
`Audio-Technica’s Motion is Premature Because Bose Has Not Had an
`
`Opportunity to Take Discovery of Audio-Technica’s Invalidity Claims
`
`Audio-Technica’s motion is premature because Bose has not yet completed its discovery
`
`of Audio-Technica regarding the facts Audio-Technica asserts in support of its motion.
`
`Adjudication of Audio-Technica’s motion at this time would deprive Bose of the opportunity to
`
`discover information essential to its opposition and a fair hearing, which is contrary to the
`
`purpose of summary determination practice. See Celotex, 477 U.S. at 326; Anderson, 477 U.S. at
`
`250, n.5,
`
`In support of its motion, Audio-Technica cites to, inter alia, the declaration of Jackie
`
`Greene, Vice President of Research and Development/Engineering for Audio-Technica (see
`
`Audio-Technica Memo, Exhibit 2) and e-mails purportedly exchanged between Audio-Technica
`
`and Bose employees (see Audio—Technica Memo, Exhibit H). Bose has not, to date, had the
`
`opportunity to take the deposition of Jackie Greene or Audio-Technica personnel who sent or
`
`received the e-mails submitted by Audio-Technica in support of its motion. In addition, Bose
`
`has not yet had the opportunity to discover facts necessary to establish that the alleged prior art
`
`qualifies as prior art under 35 U.S.C. §§ 102 and 103.
`
`During the course of discussing the schedule of depositions of the Respondents, it was
`
`agreed that the depositions of Respondent Phitek Systems Limited, Inc.’s corporate witness and
`
`BosE’s MOTION PURSUANT TO COMMISSION RULE 210. 1 8(d)—PAGE 4
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`

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`personnel would occur before all other Respondents since the other Respondents had deferred to
`
`Phitek for certain information. (See Exhibit 1, Declaration of Autumn Hwang (“Hwang Dec.”)
`
`at 1111 3 and 4). The depositions of Phitek’s corporate witness and personnel are scheduled to
`
`conclude May 20, 2008, and Bose is currently negotiating with Audio-Technica mutually-
`
`convenient dates and locations for depositions of their corporate witness and personnel. (See
`
`Hwang Dec. at 1111 5 and 6).
`
`For the foregoing reasons, Audio—Technica’s motion for summary determination should
`
`be either denied or continued until Bose has had a full and fair opportunity to conduct its
`
`discovery under 19 C.F.R. 210. 1 8(d).
`
`B.
`
`Expert Discovery is Necessary Before the Summary Determination Motion
`Can be Considered
`'
`
`Audio-Technica’s motion presents issues of fact that require expert discovery, which has
`
`not yet begun. Order No. 4 (Setting the Procedural Schedule) provides that initial expert reports
`
`are due on May 28, 2008, rebuttal expert reports are due on June 11, 2008, and expert discovery
`
`is to be completed by June 27, 2008. (See Hwang Dec., Exhibit C). Because Audio‘-Technica’s
`
`invalidity arguments rely upon inherency theories and combinations of prior art that were
`
`allegedly obvious to persons of ordinary skill in the art at the time of the invention, expert
`
`discovery will be very relevant to the issues raised in Audio-Technica’s motion.
`
`Audio-Technica asserts that there is no need for expert testimony because the references
`
`and the invention at issue are easily understandable. (See Audio-Technica Memo at 5).
`
`However, Audio-Technica ignores majors issues of fact which must be addressed before
`
`summary determination could be reached. As discussed above, Audio-Technica objected to
`
`Bose’s interrogatories about its claim construction, its defense of non—infringement, and its claim
`
`that the patents were invalid in part, on grounds that those interrogatories called for expert
`
`BosE’s MOTION PURSUANT TO COMMISSION RULE 210. 1 8(d)——PAGE 5
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`

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`opinion. (See Hwang Dec., Exhibit A and B, Respondent Audio-Technica U.S., Inc.’s
`
`Objections and Responses to Bose Corporation’s Contention Interrogatories, February 20, 2008,
`
`particularly, objections and responses to Interrogatory Nos. 24, 26, 27, 31, 32, 33, 35, and 36 and
`
`Audio-Technica U.S., Inc’s Objections and Responses to Bose Corporation’s Second Set of
`Interrogatories, May 8, 2008, respectively). In other Words, Audio-Technica’s own interrogatory
`
`answers show that there are substantive disputes over claim construction, infringement, and
`
`validity issues, and belie Audio-Technica’s claim that expert testimony is not needed.
`
`In the absence of expert discovery, Audio-Technica provides nothing more than attorney
`
`argument as support for several material facts. For example, Audio-Technica argues that claim 2
`
`of the ‘792 patent is invalid because certain claim limitations are “inherent in the prior art
`
`cushions.” (Audio-Technica Memo at 23). Audio-Technica fiirther argues that “[o]ne with even
`
`rudimentary skills and ordinary creativity could, in February of 1999, when Bose claims to have
`
`invented the ‘792 subject matter, plainly combine” several different prior art references that
`
`Audio-Technica relies upon. (Audio-Technica Memo at 25). ‘No swom testimony from a person
`
`of ordinary skill in the art is provided in support; only attorney argument. Clearly, Audio-
`
`Technica must present*evidence regarding these factual matters in order to be entitled to
`
`summary determination. See Continental Can Company USA, Inc. v. Monsanto C0,, 948 F.2d
`
`1264, 1268 (Fed. Cir. 1991) (summary judgment of inherent anticipation reversed because
`
`“evidence must make clear that the missing descriptive matter is necessarily present in the thing
`
`described in the reference, and that it would be so recognized by persons of ordinary skill”).
`
`Furthermore, Bose is entitled to an opportunity to fully discover its own evidence—including
`
`fact and expert discovery—to present its defense. See 19 C.F.R. § 2l0.l8(d).
`
`BosE’s MOTION PURSUANT TO COMMISSION RULE 210.l8(d)—PAGE 6
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`

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`For at least these reasons, Bose requires discovery before it may present by affidavit facts
`
`essential to justify its opposition to Audio-TechI1ica’s Motion. Therefore, Audio-Techn'ica’s
`
`motion for summary determination should be either denied or continued under 19 C.F.R.
`
`210.18(d) until Bose has had a full and fair opportunity to conduct its discovery.
`
`III.
`
`CONCLUSION
`
`For the foregoing reasons, Bose respectfully requests that the Administrative Law Judge,
`
`pursuant to Rule 210.18(d), 19 C.F.R. 210.18(d), either deny Audio-Technica’s Motion for
`
`Summary Determination that U.S. Patent 6,957,792 is Invalid or extend the time within which
`
`Bose must respond to the motion to and including July 9, 2008.
`
`Respectfully submitted,
`
`FISH & RICHARDSON P.C.
`
` Dated: May 9, 2008
`
` Ruffin B. C dell
`
`Andrew R. Kopsidas
`Jeffrey R. Whieldon
`Autumn J.S. Hwang
`Steven A. Bowers
`
`FISH & RICHARDSON P.C.
`
`1425 K Street, N.W.
`1 1”‘ Floor
`
`Washington, D.C. 20005
`Telephone: (202) 783-5070
`Facsimile: (202)783-2331
`
`Charles Hieken
`
`Gregory A. Madera
`Stephen A. Marshall
`
`FISH & RICHARDSON P.C.
`225 Franklin Street
`
`Boston, MA 02110
`
`BosE’s MOTION PURSUANT TO COMMISSION RULE 210.1 8(d)——PAGE 7
`
`

`
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
`
`Jordan T. Fowles
`
`FISH & RICHARDSON P.C.
`1717 Main Street
`Suite 5000
`
`Dallas, TX 75201
`Telephone: (214) 747-5070
`Facsimile: (214) 747-2091 '
`
`Attomeys for Complainant
`Bose Corporation
`
`BosE’s MOTION PURSUANT TO COMMISSION RULE 210. 1 8(d)—PAGE 8
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 9, 2008, a copy of
`
`COMPLAINANT BOSE CORPORATION’S OPPOSITION PURSUANT TO
`
`COMMISSION RULE 210.18(d) TO RESPONDENT AUDIO-TECHNICA’S MOTION
`FOR SUMMARY DETERMINATION THAT U.S. PATENT N0. 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 112-F
`Washington, DC 20436
`
`The Honorable Charles E. Bullock
`
`Administrative Law Judge
`U.S. International Trade Commission
`
`500 E Street, S.W., Room 317-I
`
`Washington, DC 20436
`
`Christopher Paulraj, Esq.
`T. Spence Chubb, Esq.
`Office of Unfair Importlnvestigations
`US. International Trade Commission
`500 E Street, S.W., Room 404-I
`Washington, DC 20436
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Overnight Delivery
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Ovemight Delivery
`Via Electronic Mail
`
`‘
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Ovemight Delivery '
`Via Electronic Mail
`
`Via Facsimile
`
`‘
`
`Via Electronic Docket Filing
`Not Served
`
`
`
`
`
`CIIIDECIEIZIDDEIDDCIEIIZIIZICICIDEIE
`
`BOSE’S MOTION PURSUANT TO COMMISSION RULE 210.18(d)—PAGE 9
`
`

`
`William B. Nash, Esq.
`Daniel D. Chapman, Esq.
`Mark Fassold, Esq.
`Jackson Walker L.L.P.
`
`112 E. Pecan Street., Suite 2400
`
`San Antonio, TX 78209
`
`Counselfor Respondents Phitek Systems
`Limited, GNNetcom, Inc., Creative Labs, Inc.,
`
`and Logitech Inc.
`
`Alan Cope Johnston, Esq.
`G. Brian Busey, Esq.
`Cynthia Lopez Beverage, Esq.
`Morrison & Foerster LLP
`
`2000 Pennsylvania Ave., N.W., Suite 5500
`Washington, DC 20006-1888
`
`Counselfor Respondents Phitek Systems
`Limited, GNNetcom, Inc., Creative Labs, Inc.,
`
`and Logitech Inc.
`
`James P. White, Esq.
`J. Aron Camahan, Esq.
`Welsh & Katz, Ltd.
`120 South Riverside Plaza, 22“ Floor
`Chicago, IL. 60606
`
`Counselfor Respondent Audio Technica U.S.,
`Inc.
`
`Arthur Wineburg, Esq.
`Daniel E. Yonan, Esq.
`Akin Gump Strauss Hauer & Feld LLP
`1333 New Hampshire Ave., N.W.
`Washington, DC 20036
`
`Counselfor Respondent Audio Technica U.S.,
`Inc.
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Overnight Delivery
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Overnight Delivery
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Overnight Delivery
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Overnight Delivery
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`
`
`DI:|[:l>X4DEl:JCIDEIEIZIEIZIDDDKDEDDCICIEDECI
`
`
`
`
`
`BOSE’S MOTION PURSUANT TO COMMISSION RULE 210.1 8(d)—PAGE 10
`
`

`
`Daniel Ebenstein, Esq.
`Abraham Kasdan, Esq.
`Joseph Casino, Esq.
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`
`New York, NY 10016
`
`Counselfor Respondent Panasonic
`Corporation ofNorth America
`
`Tom M. Schaumberg, Esq.
`Jamie D. Underwood, Esq.
`Adduci, Mastriani & Schaumberg, LLP
`1200 Seventh Street, N.W., Fifth Floor
`Washington, DC 20036
`
`Counselfor Respondent Panasonic
`Corporation ofNorth America
`
`DDDEDED
`
`DDDEDED
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Overnight Delivery
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`Via Hand Delivery
`Via U.S. Mail
`
`Via Overnight Delivery
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`Not Served
`
`Autumn J .S. Hwang
`
`BosE’s MOTION PURSUANT TO COMMISSION RULE 210.18(d)—PAGE 1 1
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`

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`
`
`EXHIBIT 1EXHIBIT 1
`
`EXHIBIT 1
`
`
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, D.C. 20436
`
`Before Honorable Charles E. Bullock
`
`Administrative Law Judge
`
`Investigation No. 337—TA-626
`
`
`
`In the Matter of
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`
`
`DECLARATION OF AUTUMN J.S. HWANG IN SUPPORT OF
`
`COMPLAINANT BOSE CORPORATION’S OPPOSITION
`
`PURSUANT TO COMMISSION RULE 210.18(d) TO
`RESPONDENT AUDIO-TECHNICA’S MOTION FOR
`
`SUMMARY DETERMINATION THAT U.S. PATENT NO. 6,597,792 IS INVALID
`
`1, Autumn J.S. Hwang, state the following:
`
`1.
`
`I am an attorney with the law firm of Fish & Richardson P.C. and counsel
`
`to Complainant Bose Corporation (“Bose”) in the above-captioned matter.
`
`2.
`
`I make this declaration in support of Complainant Bose Corporation’s
`
`Opposition Pursuant to Commission Rule 210. l 8(d) to Respondent Audio-Technica’s
`
`Motion for Summary Determination that U.S. Patent No. 6,597,792 is Invalid.
`
`3.
`
`On March 13, 2008, Bose noticed Audio-Technica for deposition of its
`
`corporate representative to occur on April 14, 2008.
`
`4.
`
`Bose and Respondents, including Audio-Technica, agreed that the
`
`depositions of Respondent Phitek Systems Limited, Inc.’s corporate witness and personnel
`
`would occur before all other Respondents’ depositions because the other Respondents had
`
`deferred to Phitek for much of the requested information.
`
`5.
`
`The depositions of Phitek’s personnel are scheduled to conclude May 20,
`
`2008.
`
`

`
`6.
`
`Bose is currently negotiating with Audio-Technica regarding the dates and
`
`locations for depositions of its corporate Witness and personnel.
`
`7.
`
`Pursuant to Rule 2l0.18(b), 19 C.F.R. 210.18(b), Bose’s deadline for
`
`filing affidavits opposing Audio-Technica’s motion is May 9, 2008.
`
`8.
`
`Attached hereto as Exhibit A is a true and correct copy of Respondent
`
`Audio-Technica U.S., Inc.’s Objections and Responses to Bose Corporation’s Contention
`
`Interrogatories, served February 20, 2008.
`
`9.
`
`Attached hereto as Exhibit B is a true and correct copy of Respondent
`
`Audio-Technica U.S., Inc’s Objections and Responses to Bose Corporation’s Second Set of
`
`Interrogatories, served May 8, 2008.
`
`10.
`
`Attached hereto as.Exhibit C is a true and correct copy of Order No. 4:
`
`Setting the Procedural Schedule.
`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct to the best of my knowledge.
`
`Date: `yn fl ann
`
`

`
`
`
`Hwang Declaration
`Exhibit A
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`In the Matter of
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`1
`1
`)
`
`Investigation No. 3 3 7-TA-626
`
`RESPONDENT AUDIO-TECHNICA U.S., INC.'S OBJECTIONS AND RESPONSES
`TO BOSE CORPORATION'S CONTENTION INTERROGATORIES
`
`Pursuant to the United States International Trade Commission's ("ITC7s") Rules of
`
`Practice and Procedure, 19 C.F.R. $8 210.27 and 210.29 and Ground Rule 4.4.2, Respondent
`
`Audio-Technica U.S., Inc. ("Audio-Technican) hereby submits its Objections and Responses to
`
`Bose Corporation's First Set of Interrogatories (Nos. 1-48) as follows:
`
`GENERAL OBJECTIONS
`
`1.
`
`Audio-Technica objects to the Definitions, Instructions, and interrogatories to the
`
`extent that they seek information or documents protected by the Attorney-Client Privilege, that
`
`qualify as Attorney Work Product, prepared in connection with settlement discussions, prepared
`
`in anticipation of litigation or for trial, or that are subject to any other applicable privilege,
`
`protection, immunity or restriction upon discovery, or because they otherwise call upon Audio-
`
`Technica to disclose the mental impressions, conclusions, considerations, opinions, or the legal
`
`theories of attorneys or other representatives of Audio-Technica concerning this or any other
`
`litigation. Inadvertent disclosure of any privileged or protected information or documents in
`
`response to these interrogatories shall not be deemed a waiver of the applicable privilege or
`
`protection, or of any other basis for objection to discovery, or of the right of Audio-Technica to
`
`object to the use, and see the return, of any such inadvertently disclosed information.
`
`

`
`2.
`
`Audio-Technica objects to the Definitions, Instructions, and interrogatories to the
`
`extent that they are not within the scope of permissive discovery under the Federal Rules of Civil
`
`Procedure or the Rules of the ITC and the orders and Ground Rules of the Administrative Law
`
`Judge assigned to this case. Audio-Technica will respond only to the extent required by the
`
`Rules.
`
`3.
`
`Audio-Technica objects to the Definitions, Instructions, and interrogatories to the
`
`extent that they seek to impose an improper or undue burden or a burden that exceeds that
`
`contemplated by the Federal Rules of Civil Procedure or the Rules of the ITC and the orders and
`
`Ground Rules of the Administrative Law Judge assigned to this case. Audio-Technica will
`
`respond only to the extent required by the Rules.
`
`4.
`
`Audio-Technica objects to the Definitions, Instructions and interrogatories to the
`
`extent that they are overly broad and seek disclosure of information or documents that are neither
`
`relevant to the subject matter of this investigation nor reasonably calculated to lead to the
`
`discovery of admissible evidence, or are in any other way inconsistent with the Federal Rules of
`
`Civil Procedure or the Rules of the ITC and Ground Rules of the Administrative Law Judge
`
`assigned to this case. Audio-Technica will respond to the interrogatories only to the extent
`
`required by the Rules.
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`5. Audio-Technica objects to Bosey s definition of "Audio-Technica," "you," "your," and
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`"Respondents" to the extent that the definition includes persons or entities that are separate and
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`distinct from Audio-Technica and over which Audio-Technica exercises no control; to the extent
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`that the definition does not comport with the Federal Rules of Civil Procedure; and to the extent
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`that the definition includes any entity other than Audio-Technica U.S., who is the named party to
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`this proceeding. Accordingly, all responses to these interrogatories are based on information
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`within the possession and/or control of Audio-Technica U.S. only and these answers are those
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`solely of Audio-Technica U.S., Inc.
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`6. Audio-Technica objects to the definition of "Accused Product" to the extent that it
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`includes any active noise cancelling devices other than the Audio-Technica model ATH-ANC7
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`headphone product, which is the subject of the present proceeding. Audio-Techica also sells an
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`in-ear active noise cancelling earphone device under the designation ATH-ANC3, a product
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`which has not been accused of infringement and which is not at issue here. Accordingly, all
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`responses to these interrogatories are based upon the Audio-Technica model ATH-ANC7
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`~ u i e t ~ o i n t ~ ~ noise cancelling headphones.
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`7.
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`Audio-Technica objects to the interrogatories to the extent that they use terms that
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`are not defined or understood, or are vaguely or ambiguously defined, and therefore fail to
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`identify with reasonable particularity the information sought. Audio-Technica will not speculate
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`as to the meaning to ascribe to such terms.
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`8.
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`Audio-Technica objects to the interrogatories to the extent that they are
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`duplicative.
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`9.
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`Audio-Technica objects to the Definitions, Instructions and interrogatories to the
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`extent they seek to impose an obligation on Audio-Technica to disclose information that is
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`publicly available and/or as easily obtained by other parties as Audio-Technica, or that is more
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`appropriately obtained through sources other than interrogatories, such as through expert
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`witnesses, on the grounds that such discovery is overly broad and unduly burdensome. Audio-
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`Technica also objects to the interrogatories to the extent that they seek information or documents
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`that are already known to or in the possession of Bose.
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`10. Audio-Technica objects to the interrogatories to the extent they call for lay
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`opinion, expert opinion, legal conclusions, or other non-factual responses. With regard to expert
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`opinions, Audio-Technica shall provide a disclosure of such opinions in accordance with the
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`Scheduling Order in this Investigation.
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`11. Audio-Technica objects to the interrogatories to the extent that they seek
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`information subject to confidentiality restrictions of a third party.
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`12. Audio-Technica objects to the Definitions, Instructions, and interrogatories to the
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`extent that they suggest or otherwise contend that Audio-Technica has any obligation to provide
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`Bose with estimates of information in its records if such information does not exist. Audio-
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`Technica will produce or identify records only as they are kept in the ordinary course of
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`business.
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`13. Audio-Technica generally objects to the interrogatories to the extent they call for
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`legal conclusions of questions of law.
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`14. Audio-Technica generally objects to the interrogatories to the extent that they
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`incorporate, and seek responses based on, erroneous statements of law, and any response is not to
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`be construed as an agreement with such erroneous statements of pertinent law by Bose.
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`15. Audio-Technica objects to the interrogatories to the extent that they are premature
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`since Bose has not provided complete discovery describing technical details and production of its
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`products.
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`16. Audio-Technica objects to the extent that the interrogatories, including all discrete
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`subparts, exceed 175 in number in contravention to Order No. 2 Setting the Ground Rules at T[
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`4.5 entitled "Interrogatory Limitation."
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`17. Audio-Technica objects to the Definitions, Instructions, and interrogatories requesting
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`identification and/or production of "all" documents or things, as burdensome and oppressive,
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`especially where the degree of relevance of certain documents and/or information is significantly
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`less than that of others and where a complete response can thus even be misleading.
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`18.
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`Audio-Technica objects to the definition of "identify," "identity" and
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`"identification" as contained in Boseys Definitions as being overly broad and unduly
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`burdensome. Audio-Technica will respond to the interrogatories only to the extent required by
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`the rules.
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`19. Audio-Technica incorporates by reference the general objections set forth above
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`into each of its responses, whether or not repeated therein, as well as any specific stated
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`objections. Audio-Technica may repeat a general objection for emphasis or some other reason,
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`but the failure to repeat any general objection does not waive any general objection to the
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`Interrogatories. Audio-Technica does not waive its right to amend its objections. Audio-
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`Technica's willingness to provide the requested responses or information is not an admission that
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`such responses or information are relevant or admissible.
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`20. Unless otherwise stated, individuals identified herein may only be contacted via
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`Audio-Technica7s outside litigation counsel, Welsh & Katz, Ltd.
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`21. Audio-Technica7s responses are based on information currently available to
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`Audio-Technica based upon a reasonable investigation. Investigation and discovery are ongoing.
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`Audio-Technica reserves all rights to supplement, revise and/or amend these responses should
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`additional information become available through the discovery process or other means. Audio-
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`Technica also reserves the right to produce or use any information or documents that are
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`discovered after service of these responses in support of or in opposition to any motion, in
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`depositions, or in hearings. In responding to Bose's interrogatories, Audio-Technica does not
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`waive any objection on the grounds of privilege, competency, relevance, materiality,
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`authenticity, or admissibility of the information contained in these responses.
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`22. Audio-Technica objects to the extent that each interrogatory seeks information not
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`within Audio-Technica's possession or control, specifically because Phitek manufactures the
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`product and likely has much of the requested information pertaining the manufacture and
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`assembly of the ATH-ANC7 product.
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`RESPONSES TO INTERROGATORIES
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`INTERROGATORY NO. 24: For each Asserted Claim of the Bose Patents, provide a claim
`chart setting forth your construction of each claim term, element or limitation which you contend
`requires a claim construction, including all intrinsic or extrinsic evidence supporting your
`constructions, and identification of any terms Audio-Technica asserts to be interpreted under 35
`U.S.C. $ 112 7 6.
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`RESPONSE: The information requested by this interrogatory is premature in that there
`has been little discovery (and no expert discovery in this matter), and Audio-Technica
`accordingly lacks appropriate knowledge and information to answer this interrogatory.
`Further answering, Audio-Techinca objects because Bose has not provided proper
`information about the patents in suit upon which a proper claim construction may be based.
`For example, Bose has not divulged how it measures and defines "compliance" of the '252
`patent, especially those figures presented to the ITC in Exhibit 12 and relied upon by the
`ITC in instituting this Investigation. Disclosure of information of this nature is required
`for the proper construction of the terms of '252 patent (including "compliance"). Given
`the lack of discovery and ability to have any participation of experts in the matter, an
`answer to this interrogatory is premature at this time. Subject to and without waiving these
`objections or the general objections, Audio-Technica will supplement this response and
`provide its complete claim chart setting forth the claim construction with input from its
`expert(s) as expeditiously as is possible. Audio-Technica reserves the right to further
`supplement this interrogatory as additional discovery and information comes to the
`attention of Audio-Technica. Audio-Technica further notes that terms requiring
`construction and/or definition are disclosed in co-respondent Phitek's answers to Bose's
`interrogatories on the same subject.
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`INTERROGATORY NO. 25: Separately for each Asserted Claim of the '252 Patent, state
`whether you contend the claim is not infringed by any of the Accused Products, and if so, (a)
`identify, for each Accused Product that you contend does not infringe, all factual bases for
`contending that the Asserted Claim is not infringed; (b) identify, by reference to specific
`limitations of each Asserted Claim, the structure or attributes of the Accused Product(s) that you
`contend cause the importation, manufacture, use, sale, or offer for sale of the Accused Product(s)
`to not infringe; (c) identify all documents you may rely upon in briefing or at hearing in this
`matter as evidence in support of your contentions; and (d) identify the three (3) person(s) most
`knowledgeable about the factual bases for your contentions.
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`RESPONSE: The information requested by this interrogatory is premature in that there
`has been little discovery (and no expert discovery in this matter), and Audio-Technica
`accordingly lacks appropriate knowledge and information to answer this interrogatory.
`Audio-Technica denies that any of the claims of the '252 Patent are infringed by Audio-
`Technics's ATH-ANC7 product. At the very least, Audio-Technics's ATH-ANC7 product
`does not have "a high compliance driver with a driver compliance that is greater than said
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`rear cavity compliance