By Eric Schweibenz
On September 23, 2013, ALJ Thomas B. Pender issued Order No. 6 regarding Respondent MaxLite, Inc.’s (“MaxLite”) jurisdiction argument in Certain Dimmable Compact Fluorescent Lamps and Products Containing Same (Inv. No. 337-TA-830).

By way of background, the Commission instituted this investigation on February 22, 2012 based on a complaint filed by Neptun Light, Inc. and Andrzej Bobel (collectively, “Neptun”) alleging violation of Section 337 by reason of infringement of various claims of U.S. Patent Nos. 5,434,480 and 8,035,318 by several respondents, including MaxLite.  See our February 23, 2012 post for more details.  On July 25, 2012, the Commission terminated the investigation as to MaxLite and entered a consent order preventing MaxLite from importing dimmable compact fluorescent lamps (“CFLs”) that infringed claim 9 of the ‘480 patent.

On February 6, 2013, MaxLite petitioned the Commission under Rule 210.76 for modification of the consent order on the basis of a recent decision by the Northern District of Illinois that dimmable CFLs purchased by MaxLite from a certain third party are subject to a covenant not to sue and thus do not infringe claim 9 of the ‘480 patent.  On February 18, 2013, Neptun filed a complaint requesting that the Commission institute a formal enforcement proceeding under Rule 210.75 to investigation and confirm violations of the consent order by MaxLite.  The Commission determined that both MaxLite’s petition and Neptune’s complaint complied with the requirements for institution of a modification and enforcement proceeding, respectively.  See our April 11, 2013 post for more details.

On April 5, 2013, ALJ Pender issued the public version of the Initial Determination (dated February 27, 2013) finding no violation of Section 337 based on his conclusion that Neptun failed to satisfy the economic prong of the domestic industry requirement, Specifically, the ALJ held that Neptun failed to prove that it was anything more than an importer who performs inspection incidental to the importation, or explain how any of its disclosed expenditures relate specifically to products that practice the ‘318 or ‘480 patents.  See our April 12, 2013 post for more details.

According to the Order, MaxLite filed its initial post-hearing brief on September 12, 2013 in which it argued that the Commission cannot find a violation of the consent order because of the finding of no domestic industry.  Noting his previous ruling striking MaxLite’s jurisdictional defense and MaxLite’s failure to object, request reconsideration of, or address the reasoning in same, ALJ Pender found that “despite being on notice of the 1988 Amendments to Section 337 that eliminated the injury requirement for statutory intellectual property investigations, MaxLite improperly continues to rely solely on inapposite case law.”  Accordingly, the ALJ allowed MaxLite to either (1) file an amended post-hearing brief with its jurisdiction argument omitted, or (2) file a supplement to its brief explaining in detail the basis for its belief that the ALJ cannot find a violation of the consent order because of his finding of no domestic industry in the underlying investigation, including addressing the various points raised in the Order.