Feit Electric Company and Feit Electric Company, Inc. (collectively, “Feit”) filed a motion to enforce a subpoena for documents to non-parties Amerlux, LLC and Amerlux Exterior, LLC (collectively, “Amerlux”). The complainant in the ITC proceeding, Philips Lighting North America Corp. and Philips Lighting Holding B.V. (collectively, “Philips”) asserted U.S. Patent Nos. 6,586,890; 7,256,554; 8,070,328; 7,038,399 (“the ‘399 patent”); and 7,262,559 (“the ‘559 patent”) against Feit.
Philips had previously asserted two of the patent—the ‘399 and ‘559 patents—against Amerlux in a patent infringement action in the District of Massachusetts (Koninklijke Philips, NV et al. v. Amerlux, LLC et al., Case No. 1-15-cv-13086). This case was dismissed before Amerlux disclosed its invalidity contentions and, therefore, Amerlux never had to disclose the prior art that it had found.
Feit served a subpoena on Amerlux “seek[ing] all prior art to the Asserted Patents known to Amerlux.” Feit subsequently agreed to limit the subpoena to prior art relating to the ‘399 and ‘559 patents. Amerlux contended that the identity of the prior art—other than the references identified in its answer to the complaint—should be protected by the work-product doctrine.