On April 10, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Dimmable Compact Fluorescent Lamps and Products Containing Same (Inv. No. 337-TA-830). In the notice, the Commission determined to affirm-in-part and reverse-in-part the Enforcement Initial Determination (“EID”) issued by ALJ Thomas B. Pender on January 10, 2014. In addition, the Commission found a violation of a consent order, issued a civil penalty order, and terminated the enforcement proceeding.
By way of background, the Commission instituted an investigation based on a complaint filed by the Complainants in this investigation, Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain dimmable compact fluorescent lamps (“CFLs”) that infringe claim 9 of U.S. Patent No. 5,434,480 (the ‘480 patent). The complaint named numerous respondents, including MaxLite, Inc. (“MaxLite”). On July 25, 2012, the Commission terminated the investigation with respect to MaxLite and entered a consent order preventing MaxLite from importing dimmable CFLs that infringe claim 9 of the ‘480 patent. MaxLite petitioned the Commission for a modification of the consent order based on a district court proceeding regarding a covenant not to sue. Additionally, Neptun filed a complaint requesting that the Commission institute a formal proceeding to investigate a violation of the consent order. The Commission instituted a consolidated formal enforcement and modification proceeding to determine whether MaxLite was in violation of the consent order. In the EID, ALJ Pender found that MaxLite’s accused CFL bulbs infringed claim 9 of the ‘480 patent, but that Neptun had not demonstrated infringement by MaxLite’s “dimmable CFL Faux Cans” (“Faux Cans”). See our January 14, 2014 post for more details on the EID. On February 26, 2014, the Commission determined to review the EID in part and requested briefing on certain patent-related issues and on assessment of the civil penalty. See our March 5, 2014 post for more details.
According to the April 10 notice, after considering the record of the investigation, including the EID, the petitions for review and responses thereto, and the parties’ briefing in response to the Commission’s notice of review, the Commission determined to affirm-in-part and reverse-in-part the EID. In particular, the Commission reversed ALJ Pender’s finding that claim 9 has a “bi-directionality” requirement imposed by disavowal in the patent specification. The Commission also reversed the portion of the non-infringement determination regarding the Faux Cans predicated on this claim construction. However, the Commission affirmed the ALJ’s determination that Neptun had failed to demonstrate infringement by the Faux Cans even absent such a “bi-directionality” requirement. The Commission also determined to impose a civil penalty of $10,000 on MaxLite for violation of the consent order as to the accused CFL bulbs.
The notice states that a Commission opinion is forthcoming. We will provide additional information once the public version of the opinion issues.