UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Charles E. Bullock
`Administrative Law Judge
`
`Investigation No. 337-TA-626
`
`
`
`In the Matter of
`
`CERTAIN NOISE CANCELLING
`HEADPHONES
`
`
`
`
`
`
`
`COMPLAINANT BOSE CORPORATION’S MOTION IN LIMINE TO PRECLUDE
`RESPONDENTS’ EXPERT, DR. MARSHALL BUCK, FROM PROVIDING OPINIONS
`WHICH WERE NOT DISCLOSED IN HIS EXPERT REPORTS OR HIS DEPOSITION
`
`Complainant Bose Corporation (“Bose”) respectfully submits this motion in limine to
`
`preclude Dr. Marshall Buck, expert witness for Respondent Audio-Technica U.S., Inc., from
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`providing testimony at trial that is beyond the scope of his expert reports and deposition.
`
`According to Dr. Buck’s witness statements, submitted on August 29, 2008 (revised) and
`
`October 2, 2008, Respondents intend to proffer opinion testimony through Dr. Buck that was not
`
`disclosed in any of Dr. Buck’s expert reports. In accordance with Ground Rules 6 and 10.5.6,
`
`Bose respectfully requests that Respondents be precluded from proffering any opinions of Dr.
`
`Buck not expressly contained in his expert reports or disclosed in his deposition testimony,
`
`including specifically those opinions described below.
`
`The Administrative Law Judge’s Ground Rules explicitly prohibit experts from providing
`
`at trial opinions that were not previously disclosed in their expert reports or at their depositions.
`
`Ground Rule 6 requires that expert reports “contain a complete statement of all opinions to be
`
`expressed and the basis and reasons therefore.” Ground Rule 10.5.6 states that “An expert’s
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`testimony at trial shall be limited in accordance with the scope of his or her expert report(s),
`
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`
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`

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`
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`deposition testimony, or within the discretion of the Administrative Law Judge” (emphasis
`
`added). Permitting Respondents to submit new, previously-undisclosed expert opinion at trial
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`would not only violate the Court’s explicit Ground Rules, but would also work a severe prejudice
`
`on Bose by having deprived Bose of full and fair discovery and the opportunity to rebut any such
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`opinions through cross-examination of Dr. Buck in his deposition.
`
`The Court’s Ground Rule No. 6, which states that “[t]he [expert] report shall contain a
`
`complete statement of all opinions to be expressed and the basis and reasons therefore,”
`
`(emphasis added), mirrors the language of Fed. R. Civ. P. 26(a)(2)(B)(i).1 The principal goals of
`
`Fed. R. Civ. P. 26(a)(2)(B)(i) are twofold: (1) to impose an affirmative duty on experts to
`
`disclose complete information in order to prevent “surprise[s] as to the scope of testimony,” and
`
`to prevent the tactic of surprise from determining the outcome of litigation, Anderson v. Ridge
`
`Tool Co., slip. op. 2008 WL 3849923 (E. D. Ky. Aug. 14, 2008) (citing Fielden v. CSX Transp.,
`
`Inc., 482 F.3d 866, 871 (6th Cir. 2007)); Sherrod v. Lingle, 223 F.3d 605, 613 (7th Cir. 2000);
`
`see also Halcomb v. Washington Metropolitan Area Transit Authority, 526 F.Supp.2d 24, 28 (D.
`
`D.C. 2007); and (2) to conserve judicial resources by preventing surprises during later stages of
`
`litigation. See, e.g., Sylla-Sawdon v. Uniroyal Goodrich Tire Co., 47 F.3d 277, 284 (8th Cir.
`
`1995), cert. denied, 516 U.S. 822, 116 S. Ct. 84, 133 L.Ed.2d 42 (1995); Nan Ya Plastics Corp.
`
`v. Global Polymers, LLC, 2005 WL 5988669 at *2 (W. D. Ky. 2005); Reed v. Binder, 165 F.R.D.
`
`424, 429 (D. N.J. 1996)).
`
`Motions to preclude experts from offering testimony at trial which was not previously
`
`disclosed in an expert report are routinely granted. See, e.g., Certain SDRAMs, DRAMS, ASICs,
`
`
`1 See Order No. 2, Ground Rule No. 6, “Expert Witnesses and Reports” (January 4, 2008); the language of
`Fed.R.Civ.Pro. 26(a)(2)(B)(i) differs from that of Ground Rule No. 6 only in minutia: “The report must contain: a
`complete statement of all opinions the witness will express and the basis and reasons for them.” 26(a)(2)(B)(i).
`2
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`
`
`
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`

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`
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`RAM- and- LOGIC Chips, Microprocessors, Microcontrollers, Processes for Manufacturing
`
`Same and Products Containing Same (“SDRAMs”), Inv. No. 337-TA-404, Order No. 17, at 2
`
`(Apr. 17, 1998) (Luckern) (precluding expert from testifying to relevant material not contained
`
`in expert report);. Halcomb v. Washington Metropolitan Area Transit Authority, 526 F.Supp.2d
`
`24, 28 (D. D.C. 2007); Walsh v. McCain Foods Ltd., 81 F.3d 722, 727 (7th Cir. 1996);
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`Huddleston v. Baumfolder Corp., slip op. 2008 WL 341666 (E. D. Mo. 2008) (Feb. 5, 2008);
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`Brawhaw ex rel. Hays v. Marine Health Care, Inc., slip op. 2008 WL 2004707 (N. D. Miss.
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`2008) (May 8, 2008); Reynolds v. General Motors Corp., Not Reported in F.Supp.2d, 2007 WL
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`2908564 (N. D. Ga. 2007) (Sept. 28, 2007).
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`Specifically, the witness statements Respondents submitted for Dr. Buck include
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`testimony on the following matters not addressed in either of Dr. Buck’s reports:
`
`1.
`
`Opinions regarding any accused product, other than Audio-Technica’s ANC7
`
`headphone. (See RX-137, Dr. Marshall Buck Direct Witness Statement
`
`(Revised), Question and Answer No. 204, RX-901, Dr. Marshall Buck Rebuttal
`
`2.
`
`3.
`
`4.
`
`5.
`
`Witness Statement, Question and Answer No. 9).
`
`Opinions that the ‘252 patent is invalid under 35 U.S.C. § 102.
`
`Opinions that the ‘252 patent is invalid under 35 U.S.C. §112.
`
`Opinions regarding “air boundary layer.” (See RX-137, Nos. 145 – 147).
`
`Opinions regarding construction of claim terms or interpretation of the ‘792
`
`patent which were not previously disclosed. (See RX-137, Q&A No. 200).
`
`6.
`
`Testimony and opinions regarding “blow-on” test of drivers. (See RX-137, Q&A
`
`No. 202).
`
`
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`3
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`

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`7.
`
`Opinions regarding the motivations of a person of ordinary skill in the art
`
`designing an ANR headphone. (See RX-137, Q&A No. 101, 200, 203).
`
`8.
`
`Opinions regarding the standard engineering practice in designing ANR
`
`headphone (RX-901, Q&A No. 5)
`
`9.
`
`Opinions regarding the use of tangential grooves in transducer design. (See RX-
`
`137, Q&A No. 207).
`
`10.
`
`Opinions regarding construction of claim terms or interpretation of the ‘792
`
`patent which were not previously disclosed. (See RX-137, Q&A Nos. 51
`
`(“driver”), 59 (“acoustically add volume”), 66,
`
`11.
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`Opinions about alleged prior art with respect to the ‘792 patent, including
`
`opinions regarding:
`
`a. The density and acoustic flow resistance of the foam inside the ATH-910
`
`cushion (see RX-137, Q&A No. 67),
`
`b. U.S. Patent No. 4,494,074 not previously opined on by Dr. Buck (see RX-
`
`137, Q&A Nos. 110, 111, 112), and
`
`c. U.S. Patent No. 5,182,774 not previously opined on by Dr. Buck (see RX-
`
`137, Q&A No. 116).
`
`12.
`
`Opinions regarding Koss (Quite Zone QZ-2000), Sony (MDR-NC20), NCT
`
`(various Noisebuster models), and Sennheiser (see RX-137, Q&A No. 120),
`
`13.
`
`Opinions why Dr. Buck was unable to locate prior art ANR headphones. (See RX-
`
`137, Q&A No. 122).
`
`14.
`
`Testimony and opinions regarding Dr. Buck’s conversation with Owen Jones.
`
`(See RX-137, Q&A Nos. 101, 200; RX-901, Q&A No. 5).
`
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`4
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`15.
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`Opinions regarding Dr. Durand Begault’s, Bose’s expert, testing regarding the
`
`‘792 patent which were not disclosed previously. (See RX-137, Q&A No. 124
`
`(opining that more repetitions of tests were needed); RX-901, Q&A Nos. 24
`
`(opining that multiple repetitions and questions regarding testing conditions), 25
`
`(variations in Begault’s results)).
`
`16.
`
`Opinions regarding passive attenuation of passive headphones and comparison to
`
`passive attenuation of ANR headphones. (See RX-901, Q&A Nos. 12 – 13).
`
`17.
`
`Opinions regarding reasons why passive headphones have modest size rear
`
`cavities. (See RX-901, Q&A Nos. 15, 17).
`
`18.
`
`Opinions regarding ISO 4896-3, RX-900C. (See RX-901, Q&A No. 24).
`
`In accordance with Ground Rules 6 and 10.5.6, Bose respectfully requests that
`
`Respondents be precluded from proffering any opinions of Dr. Buck which were not expressly
`
`contained in his expert reports or disclosed in his deposition testimony, including specifically
`
`those opinions described herein.
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`Respectfully submitted,
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`
`
`
`
`FISH & RICHARDSON P.C.
`
`
`
`/s/ Autumn J. S. Hwang
`
`Ruffin B. Cordell
`Andrew R. Kopsidas
`Jeffrey R. Whieldon
`Autumn J.S. Hwang
`Steven A. Bowers
`FISH & RICHARDSON P.C.
`1425 K Street, N.W.
`11th Floor
`Washington, D.C. 20005
`5
`
`
`
`
`Dated: October 17, 2008
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`
`
`

`
`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
`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
`
`Attorneys for Complainant
`Bose Corporation
`
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`6
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 17, 2008, a copy of
`
`COMPLAINANT BOSE CORPORATION’S MOTION IN LIMINE TO PRECLUDE
`RESPONDENTS’ EXPERT, DR. MARSHALL BUCK, FROM PROVIDING OPINIONS
`WHICH WERE NOT DISCLOSED IN HIS EXPERT REPORTS OR HIS DEPOSITION
`_________________
`was served on the following as indicated:
`
`
` 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
`
`
`Marilyn R. Abbott
`Secretary
`U.S. International Trade Commission
`500 E. Street, S.W., Room 112-F
`Washington, DC 20436
`
`
`
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`
`
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`
`
`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 Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 404-I
`Washington, DC 20436
`
`
`
`
`

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`
`
`
`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
`
`Counsel for Respondents Phitek Systems
`Limited, GN Netcom, 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
`
`Counsel for Respondents Phitek Systems
`Limited, GN Netcom, Inc., Creative Labs, Inc.,
`and Logitech Inc.
`
`
`James P. White, Esq.
`J. Aron Carnahan, Esq.
`Welsh & Katz, Ltd.
`120 South Riverside Plaza, 22nd Floor
`Chicago, IL. 60606
`
`Counsel for 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
`
`Counsel for Respondent Audio Technica U.S.,
`Inc.
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`
`8
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` 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
`
`

`
`
`
`
`
`
`
`
`
` 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
`
`/s/ Patrick Edelin, Jr.
`
`Patrick Edelin, Jr.
`
`
`
`9
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`
`
`Daniel Ebenstein, Esq.
`Abraham Kasdan, Esq.
`Joseph Casino, Esq.
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`
`Counsel for Respondent Panasonic
`Corporation of North America
`
`
`Tom M. Schaumberg, Esq.
`Jamie D. Underwood, Esq.
`Adduci, Mastriani & Schaumberg, LLP
`1200 Seventh Street, N.W., Fifth Floor
`Washington, DC 20036
`
`Counsel for Respondent Panasonic
`Corporation of North America
`
`
`
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`

`
`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
`
`[PROPOSED] ORDER NO.: ______
`
`
`
`GRANTING COMPLAINANT BOSE CORPORATION’S
`MOTION IN LIMINE TO PRECLUDE RESPONDENTS’ EXPERT, DR. MARSHALL
`BUCK, FROM PROVIDING OPINIONS WHICH WERE NOT DISCLOSED IN HIS
`EXPERT REPORTS OR HIS DEPOSITION
`
`
`
`Having considered Complainant Bose Corporation’s Motion In Limine to Exclude to
`
`Preclude Respondents’ Expert, Dr. Marshall Buck, From Providing Opinions Which Were Not
`
`Disclosed in His Expert Reports or His Deposition and determining that good cause has been
`
`show, IT IS HEREBY ORDERED that the Motion is GRANTED.
`
`Dr. Buck is precluded from providing any opinions at trial that were not previously
`
`disclosed in his expert report or his deposition and such testimony will be stricken from the
`
`record, including the following:
`
`1.
`
`Opinions regarding any accused product, other than Audio-Technica’s ANC7
`
`headphone. (See RX-137, Dr. Marshall Buck Direct Witness Statement
`
`(Revised), Question and Answer No. 204, RX-901, Dr. Marshall Buck Rebuttal
`
`Witness Statement, Question and Answer No. 9).
`
`2.
`
`3.
`
`Opinions that the ‘252 patent is invalid under 35 U.S.C. § 102.
`
`Opinions that the ‘252 patent is invalid under 35 U.S.C. §112.
`
`

`
`4.
`
`5.
`
`Opinions regarding “air boundary layer.” (See RX-137, Nos. 145 – 147).
`
`Opinions regarding construction of claim terms or interpretation of the ‘792
`
`patent which were not previously disclosed. (See RX-137, Q&A No. 200).
`
`6.
`
`Testimony and opinions regarding “blow-on” test of drivers. (See RX-137, Q&A
`
`No. 202).
`
`7.
`
`Opinions regarding the motivations of a person of ordinary skill in the art
`
`designing an ANR headphone. (See RX-137, Q&A No. 101, 200, 203).
`
`8.
`
`Opinions regarding the standard engineering practice in designing ANR
`
`headphone (RX-901, Q&A No. 5)
`
`9.
`
`Opinions regarding the use of tangential grooves in transducer design. (See RX-
`
`137, Q&A No. 207).
`
`10.
`
`Opinions regarding construction of claim terms or interpretation of the ‘792
`
`patent which were not previously disclosed. (See RX-137, Q&A Nos. 51
`
`(“driver”), 59 (“acoustically add volume”), 66,
`
`11.
`
`Opinions about alleged prior art with respect to the ‘792 patent, including
`
`opinions regarding:
`
`a. The density and acoustic flow resistance of the foam inside the ATH-910
`
`cushion (see RX-137, Q&A No. 67),
`
`b. U.S. Patent No. 4,494,074 not previously opined on by Dr. Buck (see RX-
`
`137, Q&A Nos. 110, 111, 112), and
`
`c. U.S. Patent No. 5,182,774 not previously opined on by Dr. Buck (see RX-
`
`137, Q&A No. 116).
`
` 2
`
`

`
`12.
`
`Opinions regarding Koss (Quite Zone QZ-2000), Sony (MDR-NC20), NCT
`
`(various Noisebuster models), and Sennheiser (see RX-137, Q&A No. 120),
`
`13.
`
`Opinions why Dr. Buck was unable to locate prior art ANR headphones. (See RX-
`
`137, Q&A No. 122).
`
`14.
`
`Testimony and opinions regarding Dr. Buck’s conversation with Owen Jones.
`
`(See RX-137, Q&A Nos. 101, 200; RX-901, Q&A No. 5).
`
`15.
`
`Opinions regarding Dr. Durand Begault’s, Bose’s expert, testing regarding the
`
`‘792 patent which were not disclosed previously. (See RX-137, Q&A No. 124
`
`(opining that more repetitions of tests were needed); RX-901, Q&A Nos. 24
`
`(opining that multiple repetitions and questions regarding testing conditions), 25
`
`(variations in Begault’s results)).
`
`16.
`
`Opinions regarding passive attenuation of passive headphones and comparison to
`
`passive attenuation of ANR headphones. (See RX-901, Q&A Nos. 12 – 13).
`
`17.
`
`Opinions regarding reasons why passive headphones have modest size rear
`
`cavities. (See RX-901, Q&A Nos. 15, 17).
`
`18.
`
`Opinions regarding ISO 4896-3, RX-900C. (See RX-901, Q&A No. 24).
`
`
`
`So ORDERED this ______ day of ____________, 2008.
`
`
`
`
`
`
`
`Hon. Charles E. Bullock
`Administrative Law Judge
`
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` 3