18
May
By Alex Gasser
On May 16, 2011, Lutron Electronics Co., Inc. (“Lutron”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain lighting control devices including dimmer switches and parts thereof that infringe U.S. Patent Nos. 5,637,930 (the ‘930 patent) and/or 5,248,919 (the ‘919 patent) (collectively, the “asserted patents”):

  • Pass & Seymour, Inc. of Syracuse, New York

  • AH Lighting of Los Angeles, California

  • American Top Electric Corp. of Santa Ana, California

  • Big Deal Electric Corp. of Santa Ana, California

  • Diode LED of Emeryville, California

  • Elemental LED, LLC of Emeryville, California

  • Wenzhou Huir Electric Science & Technology Co., Ltd. of China

  • Westgate Mfg., Inc. of Vernon, California

  • Zhejiang Lux Electric Co. LTD. of China

  • Zhejiang Yuelong Mechanical & Electrical Co. LTD. of China


According to the complaint, the ‘930 patent relates to a dimmer product with a switching control sized and arranged relative to the dimming control so that the switching function is emphasized over the dimming function.  The ‘919 patent relates to a dimmer switch with multiple fade-rate capability, to allow for a longer time from the tap of an on-off button to a lamp turning fully off.

The complaint alleges that Elemental LED and the three Proposed Respondents located in China manufacture, import, and/or sell infringing lighting control devices and/or components, while the remaining Proposed Respondents import, distribute, and/or sell infringing devices.  The complaint specifically identifies a number of allegedly infringing products provided by the various Proposed Respondents.

As to related litigations, the complaint states that on May 16, 2011, concurrently with the filing of this complaint, Lutron brought an action for infringement of the ‘930 patent against Pass & Seymour, AH Lighting, American Top Electric Corp., Big Deal Electric Corp., Diode LED, Elemental LED, and Westgate, and for infringement of the ‘919 patent against Westgate in the United States District Court for the Central District of California.  Further, on July 24, 2009, the ITC instituted Investigation No. 337-TA-681 based on a complaint filed by Lutron alleging violations of Section 337 by reason of infringement of the ‘930 patent by Neptun Light, Inc, and that investigation was terminated based on a consent order.  On May 11, 2009, the ITC instituted Investigation No. 337-TA-676 based on another complaint filed by Lutron alleging Section 337 violations by reason of infringement of the ‘930 and ‘919 patents by Universal Smart Electric Corp, which likewise terminated based on a consent order.  On March 2, 2007, Lutron brought an action against Leviton Manufacturing Co. (“Leviton”) in the United States District Court for the Eastern District of Texas, (Civil Action No. 9:07-CV-43) for Leviton’s alleged infringement of the ‘930 and ‘919 patents, which was dismissed based on settlement.  On April 5, 2007, the ITC instituted Investigation No. 337-TA-599 based on a Complaint filed by Lutron alleging violations of Section 337 by reason of infringement of the ‘930 and ‘919 patents, and/or additional U.S. Patent Nos. 5,982,103 and 5,905,442 by Leviton and Control4 Corporation, which was terminated based on a settlement with Leviton and withdrawal of the Complaint as to Control4.  On June 4, 2003, Lutron brought an action for infringement of the ‘930 and ‘919 against Cooper Industries, Ltd. in the United States District Court for the Eastern District of Pennsylvania (Case No. 2 :03 CV 03479), which was dismissed based on settlement.

With respect to the technical prong of the domestic industry requirement, Lutron alleges that its  Maestro®, RadioRA®, and Diva® dimmer switches practice at least one claim of the ‘930 or ‘919 patent.  With respect to the economic prong, Lutron alleges significant investment in plant and equipment, particularly through its manufacturing facilities in Alburtis, Pennsylvania and Humacao, Puerto Rico, as well as significant employment of labor and capital, and substantial investment in exploiting the asserted patents through engineering and research and development.

As to remedy, Lutron requests a permanent general exclusion order, alleging that (1) Lutron’s three prior ITC investigations concerning the ‘930 and ‘919 patents did not deter a substantial number of entities from continuing to manufacture, import, and sell after importation dimmer products that infringe these patents; (2) dimmer switches of certain Proposed Respondents are the same as products imported by respondents in Lutron’s two most recent ITC investigations; (3) numerous other entities in addition to the Proposed Respondents are located outside the U.S. and offer over the Internet dimmer switches and components that appear to infringe the ‘930 and ‘919 patents; (4) large business-to-business Internet portals operate to bring together importers and sellers from around the world with numerous manufacturers in China (in addition to those Chinese manufacturers identified as Proposed Respondents) who offer lighting control devices that appear to infringe the ‘930 and ‘919 patents, or who appear willing to reproduce products on request; (5) cost of producing infringing products is not a barrier to entering the U.S. market, (6) production of such products can be accomplished through simple manufacturing and testing equipment and unskilled labor, and it is relatively easy for existing manufacturers to shift production at minimal expense to produce infringing devices; (7) the U.S. has a vast distribution network for infringing products, and (8) only a general exclusion order can prevent circumvention of any relief granted by the ITC.   Lutron also requests permanent cease and desist orders be directed at the Proposed Respondents.
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