CAFC
ITC Should Have Considered Reducing $6M Penalty in Patent Fight
Written December 12, 2018
The Federal Circuit on November 27, 2018, ruled that the International Trade Commission wrongly denied DNB Holding LLC’s request to rescind or modify a $6 million penalty in a patent infringement case. DBN Holding, Inc. v. ITC, Fed. Cir., No. 17-02128, 11/27/18.
In 2012, BriarTek IP Inc. filed a complaint with the ITC, saying two-way satellite communication devices imported by DBN Holding, formerly DeLorme Publishing Co., infringed its U.S. Patent No. 7,991,380; the ITC eventually assessed a $6 million contempt penalty against DeLorme. However, DeLorme had gotten the ‘380 patent thrown out, and filed another ITC petition asking it to revoke or change the penalty because the ‘380 patent was ruled invalid.
The Commission denied the petition on the basis of “res judicata” in light of the Federal Circuit’s decision in DeLorme Publishing Co. v. Int’l Trade Comm’n, 805 F.3d 1328 (Fed. Cir. 2015). The Federal Circuit concluded that the ITC misread its earlier ruling and wrongly refused DeLorme’s request.
In 2012, BriarTek IP Inc. filed a complaint with the ITC, saying two-way satellite communication devices imported by DBN Holding, formerly DeLorme Publishing Co., infringed its U.S. Patent No. 7,991,380; the ITC eventually assessed a $6 million contempt penalty against DeLorme. However, DeLorme had gotten the ‘380 patent thrown out, and filed another ITC petition asking it to revoke or change the penalty because the ‘380 patent was ruled invalid.
The Commission denied the petition on the basis of “res judicata” in light of the Federal Circuit’s decision in DeLorme Publishing Co. v. Int’l Trade Comm’n, 805 F.3d 1328 (Fed. Cir. 2015). The Federal Circuit concluded that the ITC misread its earlier ruling and wrongly refused DeLorme’s request.