By Alex GasserOn October 17, 2012, the International Trade Commission (the “Commission”) issued a notice that it terminated the investigation finding a violation of Section 337 and issued a general exclusion order and cease and desist orders directed against the Respondents in Certain Lighting Control Devices Including Dimmer Switches and Parts Thereof (Inv. No. 337-TA-776).
By way of background, the investigation is based on a May 16, 2011 complaint filed by Lutron alleging violation of Section 337 in the importation into the U.S. and sale of certain lighting control devices including dimmer switches and parts thereof that infringe U.S. Patent Nos. 5,248,919 (“the ‘919 patent”) and 5,637,930 (“the ‘930 patent”). The Commission’s notice of investigation named ten separate respondents. See our June 13, 2011 post for more details. However, two of the respondents were terminated from the investigation based on consent orders, while the remaining respondents were found in default. ALJ Essex's June 7, 2012, initial determination (“ID”) granted- in-part Lutron’s motion for summary determination, finding that Lutron satisfied the domestic industry requirement, that all defaulting respondents met the importation requirement, and that each of the defaulting respondents’ accused products infringed at least one claim of both asserted patents. After examining the record of the investigation, including the June 7, 2012 ID, the Commission determined to vacate all portions of the ID relating to the ‘919 patent as moot because the patent expired on March 31, 2012, thereby terminating the Commission’s jurisdiction under 19 U.S.C. § 1337(a)(1)(B)(i). The Commission determined not to review the remainder of the ID. See our August 1, 2011 post for more details.
According to the October 17, 2012 Notice, the Commission determined to issue both: (i) a general exclusion order prohibiting the unlicensed entry of lighting control devices including dimmer switches and parts thereof that infringe certain claims of the '930 patent; and (ii) cease and desist orders prohibiting Respondents from conducting any of the following activities in the United States: importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for, lighting control devices including dimmer switches and parts thereof that infringe certain claims of the '930 patent.
The Commission further determined that a bond in the amount of 100% of the entered value of a covered article is required for temporary import during the Presidential review period. According to the notice, the Commission additionally terminated the investigation.