UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, DC
`
`Before the Honorable Charles E. Bullock
`
`Administrative Law Judge
`
`
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`
`In the Matter of Investigation No. 337—TA-626
`
`RESPONDENT AUDIO—TECHNICA’S MOTION FOR LEAVE TO
`
`FILE REPLY TO BOSE CORPORATION’S RESPONSE TO AUDIO-
`
`TECHNICA’S MOTION FOR SUMMARY DETERMINATION
`
`Pursuant to 19 C.F.R. §§ 210.15, 210.26, Respondent Audio-Technica US (“Audio-
`
`Technica”) hereby moves for leave to file the attached reply in order to address the matters raised
`
`by Complainant Bose Corporation’s (“Bose’s”) Response to Audio-Technica’s Motion for
`
`Summary Determination. Bose failed to substantively respond to even one of the uncontested
`
`facts raised in Audio-Technica’s motion in the manner prescribed by Ground Rule 3.4 and 19
`
`C.F.R. §210.18(e).
`
`Accordingly, for at least the reasons set forth above and in its motion papers, Audio-
`
`Technica respectfully requests that the Administrative Law Judge grant Audio-Technica’s Motion
`
`to File its Reply Brief.
`
`
`
`WASHINGTON, DC
`
`Before the Honorable Charles E. Bullock
`
`Administrative Law Judge
`
`
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`
`In the Matter of Investigation No. 337—TA-626
`
`RESPONDENT AUDIO—TECHNICA’S MOTION FOR LEAVE TO
`
`FILE REPLY TO BOSE CORPORATION’S RESPONSE TO AUDIO-
`
`TECHNICA’S MOTION FOR SUMMARY DETERMINATION
`
`Pursuant to 19 C.F.R. §§ 210.15, 210.26, Respondent Audio-Technica US (“Audio-
`
`Technica”) hereby moves for leave to file the attached reply in order to address the matters raised
`
`by Complainant Bose Corporation’s (“Bose’s”) Response to Audio-Technica’s Motion for
`
`Summary Determination. Bose failed to substantively respond to even one of the uncontested
`
`facts raised in Audio-Technica’s motion in the manner prescribed by Ground Rule 3.4 and 19
`
`C.F.R. §210.18(e).
`
`Accordingly, for at least the reasons set forth above and in its motion papers, Audio-
`
`Technica respectfully requests that the Administrative Law Judge grant Audio-Technica’s Motion
`
`to File its Reply Brief.
`
`
`
`Dated: May 28, 2008
`
`Respectfully submitted,
`
`
`
`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, NW
`Washington, DC 20036
`Telephone: 202-887-4000
`Facsimile: 202-887-4288
`
`Attorneysfor Audio-Technica U.S.
`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, DC
`
`Before the Honorable Charles E. Bullock
`
`Administrative Law Judge
`
`Investigation No. 337-TA-626
`
`
`
` In the Matter of
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`
`
`RESPONDENT AUDIO-TECHNICA’S REPLY IN SUPPORT OF ITS
`
`MOTION FOR SUMMARY ADJUDICATION
`
`BACKGROUND
`
`On April 29, 2008, Audio-Technica U.S. Inc. (“Audio-Technica”) moved for summary
`
`adjudication that Bose’s US Patent 6,597,792 is invalid on the basis that Audio-Technica sold a
`
`number of headphone models embodying every element of Claim 1 of the ‘792 patent more than
`
`a decade before Bose claims to have invented the subject matter thereof, thus invalidating Claim
`
`1 pursuant to 35 U.S.C. §l02(b). Audio-Technica similarly demonstrated that Claim 2 (which is
`
`a combination of the elements of Claim 1 with known noise-cancelling technology disclosed by
`
`Bose more than 20 years ago) is invalid for obviousness pursuant to 35 U.S.C. §103.
`
`In support of its argument, Audio-Technica submitted a Statement of Material Facts
`
`pursuant to this Court’s Ground Rule 3.3, in which 97 separate undisputed facts were set forth
`
`(Docket No. 13, Document No. 298858, hereafter “SMF”). These facts were supported with
`
`appropriate documentary evidence and testimony through declaration. Bose failed to respond to
`
`any of the specific 97 facts set forth by Audio-Technica, instead claiming that further discovery
`
`was required before Bose could make any substantive response to any of the facts presented in
`
`Audio-Technica’s Motion. (Bose’s May 9, 2008 Response, Document number 299954).
`
`
`
`In a meeting of the Discovery Committee on May 14, Bose asked the Respondents to
`
`postpone briefing on Audio-Technica’s Motion for Summary Adjudication should be until July 9,
`
`2008.
`
`(Attached Ex. 1.) Audio-Technica responded that Bose owed a particularized response to
`
`Audio-Technica’s SMF, indicating which facts were admitted, which denied, and which facts
`
`Bose,
`
`in good faith, needed further discovery to answer pursuant to Ground Rule 3.4 and
`
`Fed.R.Civ.P. 56(f). Audio-Technica further indicated that it would be reasonable in agreeing to
`
`extensions to respond to those facts where a good faith basis existed for Bose to take additional
`
`discovery, but it was incumbent upon Bose to expressly admit or deny each numbered paragraph
`
`in the SMF, and specifically indicate what particular facts were still at issue pursuant to Ground
`
`Rule 3.4, so that the issues raised in the Motion could be properly narrowed.
`
`In follow-up
`
`discussions between Audio-Technica and Bose, Bose’s attomey indicated that Bose would
`
`provide a particularized response to Audio-Technica’s SMF by Friday, May 23, 2008. No such
`
`particularized response has been received to date, and Audio-Technica has heard nothing further
`
`from Bose pertaining to the subject.
`
`ARGUMENT
`
`To date, Bose has not submitted any “separate statement responding individually to the
`
`numbered paragraphs of the motion statement required by Ground Rule 3.3 with which the party
`
`disagrees, with specific references to supporting declarations, affidavits or other materials” as
`
`specifically required by Ground Rule 3.4 Neither has Bose “include[d] any similarly numbered
`
`paragraphs of additional facts, similarly referenced and supported, which the opposing party
`
`believes warrant denial of summary determination.” Ground Rule 3.4.
`
`Bose’s blanket claim that it needs more discovery in order to respond to each and every
`
`fact set forth by Audio-Technica is not well taken. Bose has the necessary information to
`
`
`
`provide the appropriate Ground Rule 3.4 Response to most (if not all) of the undisputed facts. A
`
`large majority of the facts set forth by Audio—Technica’s SMF come from evidence uniquely
`
`within Bose’s control and current custody, including Bose’s own interrogatory answers, Bose’s
`
`own interpretations of its patent, statements appearing in Bose’s own patents, and physical
`
`elements of Audio—Technica’s prior art headphones that are apparent from a simple inspection of
`
`the headphones (which inspection Bose has already completed).
`
`For example, paragraphs 1-13 of Audio—Technica’s SMF relates to actions taken by Bose
`
`to institute these proceedings and facts stated in Bose’s own patents. Similarly, paragraphs 62-89
`
`set forth facts based upon Bose’s own prior art patents and administrative actions in which Bose
`
`participated pertaining to such patents.
`
`Further, e—mail communications establish that the
`
`claimed inventor of Bose’s ‘792 patent had a prior art Audio—Technica headphone (with the
`
`claimed elements of the patent) in his possession more than a year before he “invented” the
`
`subject matter of the patent.
`
`(SMFW 90-98.) Bose claims that it needs to depose the custodian
`
`of these e-mails from Audio—Technica in order to ascertain the truth of such averrnents.
`
`(Bose’s
`
`Response at pp. 4-5.) However, Bose could simply submit a declaration of the inventor (Mr.
`
`Sapiej ewski, who is still employed by Bose) to raise any such material issue of fact.
`
`Bose can also determine from visual inspection alone whether various elements in the
`
`‘792 patent are present in Audio—Technica’s prior art headphones. Bose inspected each and every
`
`physical Audio—Technica headset that is referenced in the Motion for Summary Judgment before
`
`Bose filed its Response brief. The presence or absence of common headphone components such
`
`as a cushion (the part of the headset that contacts the ear or head of the user), a driver (the
`
`element that makes sound), a cavity (earcup), front opening on the headphones, and openings in
`
`
`
`the cushions are readily apparent from Bose’s physical inspection of the prior art device.
`
`(SMF
`
`34.) Bose’s plea for additional discovery is specious.
`
`In sum, Bose currently possesses knowledge from which it can specifically respond to, at
`
`the very least, a large majority of the 97 facts set forth by Audio-Technica. Bose needs no
`
`further discovery to admit or deny facts regarding Bose’s own prior art patents, Bose’s own
`
`admissions and claim interpretations, what Bose’s own inventor knew, what happened when
`
`Bose was before the European Patent Office, and common elements of Audio-Technica’s prior
`
`art headphones that a simple inspection illuminate. But Bose has not even attempted to respond
`
`substantively in accordance with Ground Rule 3.4.
`
`Bose’s categorical refusal to respond to any of the 97 SMF set forth by Audio-Technica
`
`as required by Ground Rule 3.4 prejudices the Respondents here. Under Ground Rules, these
`
`factual
`
`issues should have been narrowed. Had Bose properly responded with specific
`
`admissions, denials, and which specific SMF require additional discovery to admit or deny, there
`
`would be no need for Respondents to address the undisputed elements of the prior art in expert
`
`reports due today (e.g., the same elements the ITC Staff identified in its Response to the Motion
`
`for Summary Judgment as likely present in the prior art, such as a driver, cushions, front
`
`opening, plurality of openings, etc.). However, because Bose provided no substantive response
`
`whatsoever, all parties are forced to put likely uncontested issues in expert reports because it is
`
`unknown whether these are truly uncontested issues.
`
`Bose’s delay in responding to Audio-Technica’s Motion for Summary Judgment and
`
`corresponding failure to even attempt to admit, deny, or appropriately respond to each of Audio-
`
`Technica’s facts as provided by Ground Rule 3.4 does little to move this proceeding to
`
`conclusion, but instead creates delay and imposes undue costs on all Respondents. Audio-
`
`
`
`Technica’s Motion for Summary Adjudication could resolve all issues pertaining to the ‘792
`
`patent (or at least significantly narrow the issues for trial), and Bose’s failure to respond in the
`
`manner prescribed by Ground Rule 3.4 to facts that are undisputed is inappropriate. Such facts
`
`that were not responded to should be held to be established here. See, e.g., Cent. Mfg. v. Surgical
`
`Navigation Techs, Inc., 92 Fed. Appx. 789, 790 (Fed. Cir. 20O4)(Aff1rming the TTAB’s holding
`
`that the facts of a summary judgment motion were conceded for failure to respond to such facts,
`
`and further affirming the TTAB’s denial of Rule 56(f) request for further discovery, noting “Each
`
`discovery request under Rule 56(f) must be adequately supported by a showing of need by the
`
`movant.”)
`
`When the facts set forth in Audio-Technica’s moving brief are taken as established,
`
`summary adjudication of invalidity of the ‘792 patent is appropriate. The presence of the
`
`elements claimed in the patent (e.g., a headset, driver, cushion, plurality of holes that have
`
`inherent characteristics described by the patent, etc.) have not been substantively disputed by
`
`Bose.
`
`In addition, as Audio-Technica’s SMF makes clear, the addition of active noise reduction
`
`(ANR) to a quality headphone (like the ATH—910) is obvious in View of the fact that Bose
`
`described all elements of ANR in expired patents dating back some 20 years ago.
`
`"Rule 56(c)
`
`mandates the entry of summary judgment .
`
`.
`
`. against a party who fails to make a showing
`
`sufficient to establish the existence of an element essential to that party's case, and on which that
`
`party will bear the burden of proof at trial." Celotex Corp. v. Catretz‘, 477 U.S. 317, 322 (1986)
`
`(emphasis added).
`
`CONCLUSION
`
`For the reasons set forth herein, and in light of Bose’s failure to substantively respond to
`
`Audio-Technica’s statement of facts, Audio-Technica respectfully asks that the 97 facts set forth
`
`
`
`in Audio-Technica’s Statement of Material Facts be deemed established. With such facts
`
`established, Audio-Technica respectfully requests that summary determination be granted on the
`
`‘792 patent because, as set forth in the memorandum, such facts show a prima facie case of
`
`anticipation of Claim 1 and obviousness of Claim 2 of the ‘792 patent.
`
`Dated: May 28, 2008
`
`Respectfully submitted,
`
`YSn
``Sn _// nSn
`/"
`2
`//-
`/’
`I / 5/! //7"
`V/{JV//fl
`/’ midi/"L-“Q ,,/7 BWn ‘» "r
`‘éw y/”/"»/1 -—..
`
`‘
`
`James P. White
`
`"
`
`A
`
`J. Aron Camahan
`
`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, NW
`Washington, DC 20036
`Telephone: 202-887-4000
`Facsimile: 202-887-4288
`
`Attorneysfor Audio-Technica U.S.
`
`
`
`EXHIBIT 1
`
`
`
`® Fish & Richardson p.c.
`
`Memorandum
`
`Date May 14, 2008
`To Discovery Committee
`From Fish & Richardson
`
`Re
`
`In the Matter of Certain Nose Cancelling Headphones, Inv. No. 337-TA-626
`
`Agenda for Discovery Committee Meeting May 14, 2008
`
`Discovery by Complainant Bose
`
`Privilege Log
`
`1.
`
`Bose has reviewed privilege logs provided by Respondents and have objections.
`
`Production
`
`2.
`
`Panasonic represented at the last discovery call meeting on April 30, 2008 that it had
`completed the bulk of its production and would only be producing minor amounts. On
`May 9, 2008, Panasonic served via e-mail a letter stating that it was producing more than
`120,000 additional pages. Confirm that this is the last of the production with all
`Respondents.
`
`Depositions
`
`3.
`
`Bose proposes corporate and personal depositions to be conducted in Stow, Ohio first
`week of June. Bose will follow up with a letter proposing the schedule.
`
`Audio-Technica, Phitek, and Creative Summa_ry Determination Motion
`
`4.
`
`Request that Respondents agree to continuation of the pending Motion for Summary
`Determination until 10 days after close of expert discovery, up to and including July 9,
`2008.
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 28, 2008 a copy of
`
`RESPONDENT AUDIO-TECHNICA’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY ADJUDICATION AND MOTION FOR LEAVE TO FILE REPLY
`
`was served on the following as indicated:
`
`
`
`
`
`
`
`
`
`
`
`Marilyn R. Abbott
`Secretary
`U.S. Intemational Trade Commission
`
`500 E Street, S.W., Room 112-F
`Washington, DC 20436
`
`Administrative Law Judge
`U. S. International Trade Commission
`
`
`
` The Honorable Charles E. Bullock
`500 E Street, S.W.
`
`Washington, DC 20436
`
`
`
`
`
`
`
`
`DDDD®EUDDDD
`
`Via Hand Delivery
`Via U. S. Mail
`
`Via Overnight Mail
`Via Electronic Mail
`
`Via Facsimile
`
`Via Electronic Docket Filing
`
`Via Hand Delivery (2 copies)
`Via U. S. Mail
`
`Via Ovemight Mail
`Via Electronic Mail
`
`Via Facsimile
`
` Christopher G. Paulraj, Esq.
`
`
`
`T. Spence Chubb, Esq.
`Office of Unfair Import Investigations
`U. S. Intemational Trade Commission
`
` DDDDE
`
`
`
`Via Hand Delivery
`
`Via U. S. Mail
`
`
`Via Overnight Mail
`Via Electronic Mail
`
`500 E Street, S.W., Room 401
`
`Washington, DC 20436
`
`
`
`Via Facsimile
`
`
`
` Ruffin B. Cordell
`Andrew R. Kopsidas
`Jeffrey R. Whieldon
`FISH & RICHARDSON P.C.
`
`
`
`
`
`1425 K Street, N.W.
`Washington, DC 20005
`
`
`
`
`
`
`DDDQD
`
` Via Hand Delivery
`Via U. S. Mail
`
`Via Ovemight Mail
`Via Electronic Mail
`
`Via Facsimile
`
`
`
` Counselfor Complainant Bose Corporation
`
`
`
`
`
`
`
`
`
`Via Hand Delivery
`Via U. S. Mail
`Via Overnight Mail
`Via Electronic Mail
`
`Via Facsimile
`
`UCIEIEEI
`
`
`
`
`
`Charles Hieken
`Gregory A. Madera
`Adam J. Kessel
`FISH & RICHARDSON P.C.
`225 Franklin Street
`
`Boston, MA 02110
`
`
` Counselfor Complainant Bose Corporation
`
`
`
`
`
`
`
`
`
`I:I Via Hand Delivery
`Via U. S. Mail
`I:I Via Overnight Mail
`I:I Via Electronic Mail
`E] Via Facsimile
`
`
`
`Alan Cope Johnston
`G. Brian Busey
`Cynthia Lopez Beverage
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Ave, N.W.
`Washington, DC 20006
`
`
`
`Counselfor Respondent Phitek Systems Limited, GN
`
` Netcom, Inc., Logitech Inc. and Creative Labs, Inc.
`
`
`
`
`William B. Nash
`I:I Via Hand Delivery
`Dan Chapman
`IX] Via U. S. Mail
`Mark Fassold
`I:] Via Ovemight Mail
`Jackson Walker LLP
`El Via Electronic Mail
`112 E. Pecan Street, Suite 2400
`El Via Facsimile
`San Antonio, TX 78205
`
`
`
`
`
`I:] Via Hand Delivery
`Via U. S. Mail
`D Via Overnight Mail
`El Via Electronic Mail
`El Via Facsimile
`
`
`
`Counselfor Respondent Phitek Systems Limited, GN
`Netcom, Inc., Logitech Inc. and Creative Labs, Inc.
`
`Daniel Ebenstein
`Abraham Kasdan
`Joseph Casino
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`
`Counselfor Respondent Panasonic Corporation of
`
`LNorth America
`
`
`
`Tom M. Schaumberg
`Jamie D. Underwood
`
`Adduci, Mastrani & Schaumberg LLP
`1200 Seventh Street NW, Fifth Floor
`Washington, DC 20036
`
`Via Hand Delivery
`Via U. S. Mail
`
`Via Overnight Mail
`Via Electronic Mail
`Via Facsimile
`
`
`
`Counselfor Respondent Panasonic Corporation of
`North America
`
` i
`
`Michael Wu
`
`Paralegal
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
