ALJ Luckern

ALJ Luckern Requires Submissions from Complainant, Respondents and Commission Investigative Staff in Certain Video Games (337-TA-658)

By Eric Schweibenz
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Jul
02
On July 2, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 37 (dated April 23, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern required Complainant Hillcrest Laboratories, Inc. (“Hillcrest”), Respondents Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively “Nintendo”), and the Commission Investigative Staff (“Staff”) to answer questions and provide submissions “as an educational vehicle” in lieu of a tutorial on the subject matter of the investigation.

According to the Order, the ALJ required Hillcrest to answer 50 questions about the disclosure and claims of the patents-in-suit.  Specifically, the ALJ’s questions related to, among other things, the prosecution history of the patents-in-suit, an equation referenced in the patents-in-suit, the accuracy of statements in the specification of the patents-in-suit, the disputed claim terms and their interpretation, the evidence Hillcrest would offer at the evidentiary hearing in support of its positions, the understanding of a person of ordinary skill in the art with respect to certain issues, and various assertions made in Nintendo’s pre-hearing statement.

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Update Regarding Certain Energy Drink Products (337-TA-678)

By Eric Schweibenz
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Jul
08
Further to our June 15 post, on July 7, 2009, Chief ALJ Paul J. Luckern issued Order No. 4 in Certain Energy Drink Products (337-TA-678).

According to the Order, ALJ Luckern set September 17, 2010 as the target date for completion of this investigation (which is 15 months after institution of the investigation).  ALJ Luckern further indicated that any final initial determination on violation should be filed no later than May 17, 2010.  In addition, ALJ Luckern noted that the evidentiary hearing in this matter will commence on February 16, 2010.

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ALJ Luckern Issues Public Version Of Enforcement Initial Determination In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
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Jul
16
On July 14, 2009, Chief ALJ Paul J. Luckern issued the public version of the April 17, 2009 Enforcement Initial Determination (“ED”) in Certain Ink Cartridges and Components Thereof (337-TA-565).  See our April 21 post.  The underlying investigation was requested by Complainants Seiko Epson Corporation, Epson America, Inc., and Epson Portland Inc. (“Epson”).

The ED found that certain Respondents violated a Limited Exclusion Order, a General Exclusion Order and a Cease and Desist Order issued by the Commission on October 19, 2007.  The Respondents at issue were Ninestar Technology Co. Ltd. and Ninestar Technology Company Ltd. (collectively, “Ninestar”), Town Sky Inc., Mipo International, Ltd. and Mipo America, Ltd. (collectively, “Mipo”), Ribbon Tree (USA) Inc. and Apex Distributing, Inc.

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ALJ Luckern Grants Motion To Modify The Protective Order In Certain Energy Drink Products (337-TA-678)

By Eric Schweibenz
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Jul
29
On July 28, 2009, Chief ALJ Paul J. Luckern issued Order No. 8 in Certain Energy Drink Products (Inv. No. 337-TA-678).  In the Order, ALJ Luckern granted complainants Red Bull GmbH and Red Bull North America, Inc.’s (collectively, “Red Bull”)  motion to modify the protective order (Order No. 2) to address the inadvertent disclosure of documents and things subject to the attorney-client privilege or work product immunity by adding a claw-back provision.  Respondents India Imports Inc., Washington Food and Supply of D.C., Inc., and Vending Plus, Inc. (collectively, “Respondents”) opposed the motion, and the Commission Investigative Staff did not take a position on the motion.

In the Order, ALJ Luckern acknowledged that he has included similar claw-back provisions in the past, but never where there was opposition to such provision.  As stated in the Order, Respondents argued that the inclusion of the proposed claw-back provision would invite discovery abuses and that the proposed claw-back provision is “a rule that confers the greatest benefits on the party with the largest number of documents to produce, viz. complainants.”  ALJ Luckern noted that the proposed claw-back provision is standard in protective orders in both federal district court cases and section 337 investigations, and further noted that Red Bull had represented that they have reviewed their documents for privilege prior to producing them.

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ALJ Luckern Issues Initial Determination Granting Complainants’ Summary Determination Motion That A Domestic Industry Exists Based On Licensing Activities In Certain 3G Mobile Handsets (337-TA-613)

By Eric Schweibenz
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Jul
29
On July 27, 2009, Chief ALJ Paul J. Luckern issued the heavily redacted public version of Order No. 42 (dated March 10, 2009) granting Complainants InterDigital Communications, LLC and InterDigital Technology Corp.’s (“InterDigital”) motion for summary determination that InterDigital’s U.S. licensing activities satisfy the domestic industry requirements of 19 U.S.C. § 1337(a)(3)(C) in Certain 3G Mobile Handsets and Components Thereof(Inv. No. 337-TA-613).

Respondents Nokia Inc. and Nokia Corporation (“Nokia”) opposed InterDigital’s summary determination motion on the basis that (1) the technical prong requires the existence of an article protected by the asserted patents; (2) InterDigital failed to demonstrate a nexus between the asserted patents and its licensing program; (3) a broad licensing program cannot satisfy the nexus requirement; (4) InterDigital failed to show that the asserted patents were important to its licensing program; (5) genuine issues of material fact existed as to whether InterDigital’s investments are substantial as required by section 337; and (6) InterDigital’s purported investment total includes activities beyond the asserted patents, such as licensing of other technology and activities prior to the issuance of the asserted patents.  According to the Order, the Commission Investigative Staff did not oppose InterDigital’s summary determination motion in view of ALJ Luckern’s Order No. 20 in Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets (Inv. No. 337-TA-601), which was adopted by the Commission, granting a motion for summary determination that a domestic industry can be established based solely on licensing activities. 

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ALJ Luckern Issues Public Version Of Initial Determination In Certain Liquid Crystal Display Modules (337-TA-634) Finding Violation Of Section 337

By Eric Schweibenz
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Aug
07
Further to our June 16 post, on August 5, 2009, Chief ALJ Paul J. Luckern issued the public version of his Final Initial and Recommended Determinations (“ID”) in Certain Liquid Crystal Display Modules, Products Containing Same, and Methods For Using The Same (Inv. No. 337-TA-634).  The Complainant in this investigation is Sharp Corporation (“Sharp”) and the Respondents are Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (collectively, “Samsung”).

In the 209-page ID, ALJ Luckern held that there was a violation of Section 337 by Samsung for importation into the U.S., sale for importation, and sale within the U.S. after importation of infringing liquid crystal display devices and products containing Samsung’s devices, in connection with certain claims of U.S. Patent No. 7,304,703 (the ‘703 patent); U.S. Patent No. 6,879,364 (the ‘364 patent); U.S. Patent No. 6,952,192 (the ‘192 patent); and U.S. Patent No. 7,304,626 (the ‘626 patent).  Further, ALJ Luckern determined that Sharp met the domestic industry (technical prong) requirement for each of the patents-in-suit because Sharp’s domestic industry articles practiced at least one asserted claim for each patent.

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ALJ Luckern Issues Initial Determination Finding No Violation Of Section 337 In Certain 3G Mobile Handsets (337-TA-613)

By Eric Schweibenz
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Aug
17
On August 14, 2009, Chief ALJ Paul J. Luckern issued a notice regarding his Final Initial and Recommended Determinations (“ID”) in Certain 3G Mobile Handsets and Components (Inv. No. 337-TA-613).

The Complainants in this investigation are InterDigital Communications, LLC and InterDigital Technology Corp. and the Respondents are Nokia Inc. and Nokia Corporation.  According to the notice, ALJ Luckern held that no violation of Section 337 had occurred in connection with the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain 3G mobile handsets and components.  Specifically, according to the notice, ALJ Luckern determined that the asserted claims of the ‘004, ‘966, ‘847, and ‘579 patents are not infringed.  He also found that the claims were not invalid and that a domestic industry exists with respect to the asserted patents.

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ALJ Luckern Agrees To Extend Target Date On Eve Of Final Initial Determination In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
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Aug
25
On August 21, 2009, Chief ALJ Paul J. Luckern issued Order No. 43 extending the target date to February 23, 2010 in Certain Video Game Machines And Related Three-Dimensional Pointing Devices (Inv. No. 337-TA-658).

According to the Order, on August 21, 2009, Complainant Hillcrest Laboratories, Inc. (“Hillcrest”) and Respondents Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively, “Nintendo”) moved to stay the procedural schedule, including the date for issuance of the final Initial Determination, and to extend the target date two months to February 23, 2010.  In support of their motion, Hillcrest and Nintendo explained that the private parties had reached settlement and intended to file a joint motion to terminate the investigation based on a settlement in the near future.

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ALJ Luckern Rules On Motion To Quash Subpoena In Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
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Sep
01
On August 27, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 11 (dated August 26) in Certain Adjustable Keyboard Support Systems and Components Thereof(Inv. No. 337-TA-670) relating to Complainant Humanscale Corp.’s (“Humanscale”) motion to quash third party subpoenas to Humanscale’s attorneys, Alston & Byrd LLP (“A&B”) and Bryan Cave LLP (“Cave”).  In the Order, ALJ Luckern quashed the subpoena to Cave and ordered A&B to either comply with the subpoena or file a motion to quash.

In support of its motion to quash, Humanscale argued that the requested documents were privileged and any non-privileged documents are either not relevant to the issues in the investigation or already in the possession of Respondents CompX International, Inc. and Waterloo Furniture Corportation Ltd. (collectively, “CompX”).  In opposition, CompX argued that (1) Humanscale failed to meet and confer prior to filing its motion to quash; (2) CompX did not want any Humanscale documents properly protected by privilege; (3) Humanscale had no standing to object to the third party subpoenas; and (4) the requested documents were relevant to the instant investigation.  For its part, the Commission Investigative Staff supported Humanscale’s motion to quash arguing that (1) the requested documents were already in the possession of CompX or identified on a privilege log; and (2) the scope of the subject document requests were overly broad and went beyond the scope of the investigation.  Third party Cave filed a response to and notice of joinder to Humanscale’s motion to quash.

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ALJ Luckern Issues Order Regarding Witness Statements and Expert Reports in Certain Light Emitting Diode Chips (337-TA-674)

By Eric Schweibenz
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Sep
11
On September 9, 2009, Chief ALJ Paul J. Luckern issued Order No. 17 regarding witness statements and expert reports in Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674).

Complainant Gertrude Neumark Rothschild (“Complainant”) proposed that witness statements should not be used in lieu of live witness testimony, though portions could be used for non-controversial matters such as witness background and qualifications.  Complainant also proposed that all expert reports and exhibits, charts, and tables relating thereto be admitted into evidence to make testimony more comprehensible.

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ALJ Luckern Grants Motion to Amend Complaint And Notice Of Investigation To Add Respondents in Certain Energy Drink Products (337-TA-678)

By Eric Schweibenz
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Sep
11
On September 8, 2009 Chief ALJ Paul J. Luckern issued Order No. 11 granting a motion filed by Complainants Red Bull GmbH and Red Bull North America (collectively, “Red Bull”) to amend the complaint and notice of investigation to add six new respondents in Certain Energy Drink Products (Inv. No. 337-TA-678).  Through its motion, Red Bull sought to add the following respondents:  Posh Nosh Imports (USA), Greenwich, Inc., Advantage Food Distributors, Ltd., Wheeler Trading, Inc., Avalon International General Trading, LLC, and Central Supply, Inc. (“Central”).

Central opposed Red Bull’s motion, arguing that Red Bull’s failure to name it in the original complaint was based on a tactical decision by Red Bull to name a small number of respondents, low on the distribution chain, in the hopes they would default.

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ALJ Luckern Issues Public Version Of Initial Determination Finding No Violation In Certain 3G Mobile Handsets (337-TA-613)

By Eric Schweibenz
|
Sep
23
Further to our August 17 post, on September 17, 2009, Chief ALJ Paul J. Luckern issued the heavily redacted public version of his 245 page August 14, 2009 Final Initial and Recommended Determinations (“ID”) in Certain 3G Mobile Handsets and Components (Inv. No. 337-TA-613).

By way of background, InterDigital Communications, LLC and InterDigital Technology Corp. (“InterDigital”) filed a complaint against Nokia Inc. and Nokia Corp. (“Nokia”) in August 2007 alleging that importation, sale for importation, and sale within the U.S. after importation of certain 3G mobile handsets and components infringed InterDigital’s ‘004, ‘966, ‘847 and ‘579 patents.  According to the ID, ALJ Luckern found no violation of Section 337, determined that the asserted claims are not invalid and not infringed, and also determined that a domestic industry exists with respect to the patents-in-suit.

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ALJ Luckern Issues Enforcement Initial Determination Finding No Violation Of Consent Order In Certain R-134a Coolant (337-TA-623)

By Eric Schweibenz
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Sep
24
On September 21, 2009, Chief ALJ Paul J. Luckern issued a notice regarding his Enforcement Initial Determination (“EID”) in Certain R-134a Coolant (Otherwise Known as 1,1,1,2-Tetrafluoroethane) (Inv. No. 337-TA-623).  In the notice, ALJ Luckern determined that the enforcement respondent Sinochem Environmental Protection Chemicals (Taicang) Co., Ltd. (“Sinochem”) did not violate the Consent Order issued by the Commission on September 11, 2008.

By way of background, INEOS Fluor Holdings Ltd., INEOS Fluor Ltd. and INEOS Fluor Americas LLC (collectively, “INEOS”) filed a complaint in December 2007 alleging violations of Section 337 by several respondents including Sinochem in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain R-134a coolant (otherwise known as 1,1,1,2-tetrafluoroethane) by reason of infringement of certain patents, including U.S. Patent No. 5,559,276.  See our April 6 post for more details.  On August 15, 2008, the Sinochem respondents moved for partial termination of the investigation based on the entry of a consent order specific to their “old” process for manufacture of R-134a coolant.  On August 20, 2008, the ALJ issued an initial determination (“ID”) granting the motion and terminating the investigation with respect to the “old” process.  The Commission determined not to review the ALJ’s ID and issued a Consent Order on September 11, 2008.  On December 12, 2008, INEOS filed a complaint, requesting that the Commission institute a formal enforcement proceeding to investigate an alleged violation of the Consent Order relating to the “old” process.  On February 18, 2009, the Commission issued a notice instituting a formal enforcement proceeding.

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ALJ Luckern Rules On Motion To Quash Subpoena In Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
|
Oct
05
On September 29, 2009, Chief ALJ Paul J. Luckern issued Order No. 18 quashing a subpoena served by Respondents CompX International, Inc. and Waterloo Furniture Corporation Ltd. (collectively, “CompX”) on Complainant Humanscale Corp.’s (“Humanscale”) attorneys, Alston & Byrd LLP (“A&B”), in Certain Adjustable Keyboard Support Systems and Components Thereof (Inv. No. 337-TA-670).

In support of its motion to quash, A&B argued that (1) when A&B ceased to represent Humanscale in 2007, A&B returned to Humanscale all documents that were not work product or confidential; (2) CompX’s subpoena seeks documents already obtained from Humanscale; (3) the requested documents are not relevant to this investigation; (4) compliance with CompX’s subpoena would pose undue burden on A&B; and (5) the burden of reviewing and logging the requested documents outweighs any alleged need for the documents.

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ALJ Luckern Issues Public Version of Enforcement Initial Determination In Certain R-134a Coolant (337-TA-623)

By Eric Schweibenz
|
Oct
09
Further to our September 24 post, on October 7, 2009, Chief ALJ Paul J. Luckern issued the public version of the Enforcement Initial Determination (“EID”) in Certain R-134a Coolant (Otherwise Known as 1,1,1,2-Tetrafluoroethane) (Inv. No. 337-TA-623).  In the EID, ALJ Luckern determined that enforcement Respondent Sinochem Environmental Protection Chemicals (Taicang) Co., Ltd. (“Sinochem”) did not violate the Consent Order issued by the Commission on September 11, 2008.  ALJ Luckern also determined that no enforcement measures are appropriate should the Commission find a violation of the Consent Order.

By way of background, INEOS Fluor Holdings Ltd., INEOS Fluor Ltd. and INEOS Fluor Americas LLC (collectively, “INEOS”) filed a complaint in December 2007 alleging violations of Section 337 by several respondents including Sinochem in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain R-134a coolant (otherwise known as 1,1,1,2-tetrafluoroethane) by reason of infringement of certain patents, including U.S. Patent No. 5,559,276.  See our April 6 post for more details.  On August 15, 2008, the Sinochem respondents moved for partial termination of the investigation based on the entry of a Consent Order specific to their “old” process for manufacture of R-134a coolant.  On August 20, 2008, the ALJ issued an initial determination (“ID”) granting the motion and terminating the investigation with respect to the “old” process.  The Commission determined not to review the ALJ’s ID and issued a Consent Order on September 11, 2008.  On December 12, 2008, INEOS filed a complaint, requesting that the Commission institute a formal enforcement proceeding to investigate an alleged violation of the Consent Order relating to the “old” process.  On February 18, 2009, the Commission issued a notice instituting a formal enforcement proceeding.

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ALJ Luckern Sets Target Date In Certain Dual Access Locks (337-TA-689)

By Eric Schweibenz
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Nov
16
Further to our October 16 and October 19 posts, on November 12, 2009, Chief ALJ Paul J. Luckern issued Order No. 3: Setting Target Date in Certain Dual Access Locks and Products Containing Same (Inv. No. 337-TA-689).

According to the Order, ALJ Luckern set December 21, 2010 as the target date (which is 14 months after institution of the investigation).  ALJ Luckern further indicated that any final initial determination on violation should be filed no later than August 23, 2010.  In addition, ALJ Luckern noted that the evidentiary hearing in this matter will commence on May 24, 2010.

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ALJ Luckern Requests Written Submissions From Parties In Certain Light Emitting Diode Chips (337-TA-674)

By Eric Schweibenz
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Nov
17
On November 16, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 23 (dated October 27, 2009) in Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674).  In the order, ALJ Luckern requested that the parties file written submissions answering various questions relating to claim construction, infringement, validity, and enforceability of the patents asserted in the investigation.  In total, ALJ Luckern posed 23 questions to Complainant Gertrude Neumark Rothschild (“Rothschild”) and 14 questions to Respondents Toshiba Corp. and Pansonic Corp. (collectively, “Respondents”).

The order required that Rothschild and Respondents file their answers to ALJ Luckern’s questions by noon on November 3, 2009.  Responses to the opposing party’s answers were required by the close of business on November 6, 2009.  The Commission Investigative Staff’s (“Staff”) responses to the private parties’ answers and responses were due by noon on November 9, 2009.  Finally, the private parties were required to file reply submissions, along with statements indicating by exhibit number which exhibits supported their initial answers to the ALJ’s questions, by noon on November 12, 2009.

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ALJ Luckern Grants Motion To Terminate The Investigation With Respect To Toshiba In Certain Light Emitting Diode Chips (337-TA-674)

By Eric Schweibenz
|
Nov
17
On November 16, 2009, Chief ALJ Paul J. Luckern issued the public version of an initial determination (“ID”) (Order No. 25) (dated October 29, 2009) in Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674).  In the ID, ALJ Luckern granted the October 28, 2009 motion of Complainant Gertrude Neumark Rothschild (“Rothschild”), seeking termination of the investigation with respect to Toshiba Corporation (“Toshiba”).

According to the ID, Toshiba did not oppose Rothschild’s motion and the Commission Investigative Staff supported the motion.  Further, in support of the motion, Rothschild argued that “in its recently-filed pre-hearing statement, Toshiba has represented that it has ceased (or intends to cease) importation into the United States of the accused product and accordingly, termination of Toshiba from the investigation is appropriate; and that pursuant to Commission rule 210.21(a)(1), [Rothschild] affirms that there exists no agreements, written or oral, express or implied between [Rothschild] and Toshiba that concern the subject matter of this investigation.”

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ALJ Luckern Denies Motion Requesting Mandatory Settlement Conference In Certain Energy Drink Products (337-TA-678)

By Eric Schweibenz
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Nov
17
On November 16, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 9 (dated August 7, 2009) in Certain Energy Drink Products (Inv. No. 337-TA-678).  In the Order, ALJ Luckern denied a motion filed by Respondents India Imports, Inc., d/b/a/ International Wholesales Club and Washington Food and Supply of D.C., Inc., d/b/a Washington Cash & Carry (collectively, “Respondents”) to order Complainants Red Bull GmbH and Red Bull North America, Inc. (collectively, “Red Bull”) to attend a mandatory settlement conference presided over by the Administrative Law Judge.

In support of their motion, Respondents argued that Red Bull had refused to respond to concrete offers for settlement proffered by Respondents, including specific monetary offers of settlement and that in the meantime, Respondents “continue to incur litigation costs imposed by a large, well-funded adversary with little apparent motivation to settle this matter.”  In opposition, Red Bull asserted that Respondents had not provided enough information for Red Bull to give adequate consideration of Respondents’ settlement offers.  The Commission Investigative Staff opposed Respondents’ motion.

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