2014-04678. Certain Dimmable Compact Fluorescent Lamps and Products Containing Same Commission Decision To Review In Part an Enforcement Initial Determination; Schedule for Filing Written Submissions

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to review in part an enforcement initial determination (“EID”) of the presiding administrative law judge (“ALJ”) in the above-captioned proceeding finding a violation of a consent order. The Commission is requesting briefing on the issues under review and on the amount of civil penalties for violation of the order.

FOR FURTHER INFORMATION CONTACT:

Sidney A. Rosenzweig, Office of the General Counsel, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone [phone]. Copies of non-confidential documents filed in connection with this investigation are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone [phone]. General information concerning the Commission may also be obtained by accessing its Internet server at http://www.usitc.gov. The public record for this investigation may be viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission's TDD terminal on [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted an investigation on February 27, 2012, based on a complaint filed by Andrzej Bobel and Neptun Light, Inc., both of Lake Forest, Illinois (collectively, “Neptun”). 77 FR 11587 (Feb. 27, 2012). The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended 19 U.S.C. 1337. More specifically, the complaint alleged that the importation into the United States, the sale for importation, and the sale within the United States after importation of certain dimmable compact fluorescent lamps (“CFLs”) and products containing the same infringe, inter alia, claim 9 of United States Patent No. 5,434,480 (“the '480 patent”). The complaint named numerous respondents, including MaxLite, Inc. of Fairfield, New Jersey (“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.

On February 6, 2013, MaxLite petitioned the Commission under Commission Rule 210.76 for modification of the consent order on the basis of certain district court proceedings regarding a covenant not to sue. On February 18, 2013, complainants filed a complaint requesting that the Commission institute a formal enforcement proceeding under Commission Rule 210.75(b) to investigate a violation of the consent order.

On April 12, 2013, the Commission determined to institute consolidated formal enforcement and modification proceedings to determine whether MaxLite is in violation of the July 25, 2012 consent order issued in the investigation; what, if any, enforcement measures are appropriate; and whether to modify the consent order. 78 FR 24233 (Apr. 24, 2013).

On January 10, 2014, the ALJ issued his enforcement ID (“EID”) in the combined enforcement and modification proceeding. Prior to the hearing, MaxLite effectively withdrew its request for modification. EID at 52. The ALJ therefore found MaxLite's modification request to be “moot” in view of “the parties' agreed interpretation of the Consent Order.” Id. The EID in all other respects dealt entirely with Neptun's enforcement complaint. At issue for enforcement of the consent order were two accused types of products: CFL bulbs (“accused CFL bulbs”); and “dimmable CFL Faux Cans” (“Faux Cans”).

The ALJ found that the accused CFL bulbs infringe claim 9 of the '480 patent. The ALJ found that Neptun had not demonstrated infringement by the Faux Cans.

On January 23, 2014, Neptun filed a petition for review regarding claim construction and noninfringement by the Faux Cans. On January 30, 2014, MaxLite and the Commission investigative attorney (“IA”) filed oppositions to Neptun's petition. MaxLite subsequently filed a revised opposition that removed certain material that Neptun had contended was beyond the scope of the record of this investigation. The Commission accepts the tendered revised opposition.

Having examined the record of this investigation, including the ALJ's final EID, the petitions for review, and the responses thereto, the Commission has determined to review the ID in part. In particular, the Commission has determined to review the ALJ's construction of the “resonant boosting circuit” limitation, and the ALJ's findings that Neptun did not demonstrate infringement by the Faux Cans because Neptun failed adequately to show that (i) there is resonance between the accused boosting capacitor and boosting inductor, EID at 39-43; and (ii) “the boosting capacitor stores and releases energy to improve the power factor,” id. at 45. The Commission has determined not to review the remainder of the EID.

In connection with the Commission's review, the parties are asked to provide further briefing. The briefing should address the following issues, and should cite the evidence of record in support of the party's arguments:

(1) Discuss whether and why a “bi-directionality” requirement for the “resonant boosting circuit” limitation is consistent with or inherent in the construction of “resonant boosting circuit” agreed to by Dr. Habetler (See Tr. 117-18, CX-54C, at Q/A 6) and, if not, whether it is required by the claim term in view of the specification.

(2) Discuss whether and why the passage in the '480 patent specification at column 4 lines 2-6, see EID at 31, serves to limit claim scope for claim 9 given that it appears to recite claim language for certain unasserted claims. Compare col. 3 line 8 - col. 4 line 20 with unasserted claim 1; see also unasserted claims 2-3. Also discuss relevant court decisions including Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094-95 (Fed. Cir. 2003) and Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1365-67 (Fed. Cir. 2012), regarding the role of the specification in construing patent claims.

(3) Assuming for this question that the specification at column 4 lines 2-6 does limit the scope of claim 9, discuss whether the EID's interpretation of “interaction” (i.e., “mutual or reciprocal action or influence,” EID at 31), is correct.

(4) In connection with the '480 patent's preferred embodiment of Figure 11's boosting and rectifying bridge substituted into Figure 1, discuss whether C1 and C3 in Figure 11 are boosting capacitors that meet the claim limitations required by the EID, even if C5 does not.

(5) If claim 9 does not impose a “bi-directionality” requirement, discuss whether Neptun demonstrated that the Faux Cans infringe claim 9.

(6) Discuss whether and why a requirement for the “resonant boosting circuit” limitation that the boosting capacitor “store and release energy to improve power factor,” EID at 45, is consistent with or inherent in the construction of “resonant boosting circuit” agreed to by Habetler (See Tr. 117-18, CX-54C, at Q/A 6) and, if not, whether it is required by the claim term in view of the specification.

(7) Discuss whether the Faux Cans infringe claim 9 if the “to improve the power factor” is not a requirement of claim 9.

The Commission may levy civil penalties for violation of the consent order. When calculating a proportionate penalty, the Commission considers, inter alia, six factors set forth in Certain Erasable Programmable Read Only Memories (“EPROMs”), Inv. No. 337-TA-276 (Enforcement), Comm'n Op. at 23-24, 26 (July 19, 1991). See generally Certain DC-DC Controllers and Products Containing the Same, Inv. No. 337-TA-698 (Enforcement), Comm'n Op. at 36-37 (Jan. 4, 2013).

Written Submissions: The parties to the investigation are requested to file written submissions on the issues under review as set forth above. In addition, the parties to the investigation, interested government agencies, and any other interested parties are encouraged to file written submissions on the amount of civil penalties to be imposed for the accused CFL bulbs, the Faux Cans, or both. The parties' submissions should cite all evidence in the record in support of such amounts, and shall address the factors set forth in EPROMs, supra. The written submissions should be filed no later than close of business on March 10, 2014, and should not exceed 60 pages. Reply submissions must be filed no later than the close of business on March 17, 2014, and should not exceed 40 pages. No further submissions on these issues will be permitted unless otherwise ordered by the Commission.

Persons filing written submissions must file the original document electronically on or before the deadlines stated above and submit 8 true paper copies to the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the Commission's Rules of Practice and Procedure (19 CFR 210.4(f)). Submissions should refer to the investigation number (“Inv. No. 337-TA-830 enforcement/modification”) in a prominent place on the cover page and/or the first page. (See Handbook for Electronic Filing Procedures, http://www.usitc.gov/​secretary/​fed_​reg_​notices/​rules/​handbook_​on_​electronic_​filing.pdf). Persons with questions regarding filing should contact the Secretary (202-205-2000).

Any person desiring to submit a document to the Commission in confidence must request confidential treatment. All such requests should be directed to the Secretary to the Commission and must include a full statement of the reasons why the Commission should grant such treatment. See 19 CFR 201.6. Documents for which confidential treatment by the Commission is properly sought will be treated accordingly. A redacted non-confidential version of the document must also be filed simultaneously with the any confidential filing. All non-confidential written submissions will be available for public inspection at the Office of the Secretary and on EDIS.

The authority for the Commission's determination is contained in section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and in Part 210 of the Commission's Rules of Practice and Procedure (19 CFR Part 210).

By order of the Commission.

Issued: February 26, 2014.

Lisa R. Barton,

Acting Secretary to the Commission.