By Eric Schweibenz
On January 10, 2014, ALJ Thomas B. Pender issued a Notice of Initial Determination and Recommended Determination on Enforcement and Modification (“EID”) 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, Inc. (“MaxLite”).  See our February 23, 2012 post for more details on the Notice of Investigation.  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 Notice, ALJ Pender determined that MaxLite violated the July 25, 2012 consent order with respect to the sale of certain dimmable CFL bulbs, and that a civil penalty of $20,000 is the appropriate enforcement measure.  The ALJ also recommended that MaxLite’s modification request be denied as moot.  Other conclusions of law in the EID are as follows:  (1) the Commission has subject matter, personal, and in rem jurisdiction in the proceeding; (2) the importation requirement is satisfied; (3) the accused MaxLite CFL bulbs infringe claim 9 of the ‘480 patent; and (4) the accused Faux Can products do not infringe claim 9 of the ‘480 patent.

The Notice included only the first page and conclusions of law from the EID.  We will provide more information once a complete public version of the EID is issued.