By Eric Schweibenz
On July 30, 2012, ALJ Thomas B. Pender issued Order No. 10 denying Complainants’ Neptun Light, Inc. and Andrzej Bobel (collectively, “Complainants”) motion for non-monetary sanctions against Respondents U Lighting America, Inc. (“ULA”) and Feit Electric Company (“Feit”) in Certain Dimmable Compact Fluorescent Lamps and Products Containing Same (Inv. No. 337-TA-830).  Specifically, Complainants motion sought to preclude ULA and Feit from relying on prior art listed in their Notice of Prior Art that was not contained in their earlier-filed contention interrogatory responses on invalidity and unenforceability. 

By way of background, this investigation is based on a complaint filed by Complainants alleging violation of Section 337 in the importation and sale of certain dimmable compact fluorescent lamps (CFLs) and products containing same that infringe one or more claims of U.S. Patent Nos. 5,434,480 and 8,035,318.  See our February 23, 2012 post for more details.

In the Order, ALJ Pender found that Complainants failed to make a good faith effort to resolve the dispute, noting first that Complainants had offered no evidence that they had met and conferred with ULA and Feit on the issue. In addition, after Complainants indicated they intended to file the motion, ULA and Feit responded that there were a number of potential uses at a hearing for prior art apart from validity challenges and offered to discuss the issue, however there was no evidence Complainants responded to this offer. Accordingly, ALJ Pender found that Complainants’ actions fell short of the good faith effort to resolve the discovery dispute required by the Ground Rules.

As to the motion itself, ALJ Pender found it “premature at best,” noting that Notices of Prior Art are not limited to references intended for use in establishing invalidity.  Thus, the ALJ classified Complainants’ allegations that ULA and Feit failed to fully respond to contention interrogatories on invalidity as speculation and denied the motion for sanctions.