Federal Circuit Directs ITC To Consider Revoking Or Modifying Civil Penalty For Infringement of Invalid Patent

In a victory for Brann & Isaacson clients, DBN Holding, Inc. (formerly DeLorme Publishing Co.) and BDN LLC, the Federal Circuit Court of Appeals has issued an opinion reversing and remanding the International Trade Commission’s decision not to rule on the merits of a petition asking the ITC to set aside a civil penalty order. The ITC originally imposed the penalty based on a finding of patent infringement, but the asserted patent claims were later conclusively adjudged to be invalid in federal court. After the judgment of invalidity became final, DBN Holding and BDN asked the ITC to revoke or modify the penalty, but the ITC denied their request on the ground that the Federal Circuit had already addressed those issues in an earlier appeal. The Federal Circuit agreed with DBN Holding and BDN that the ITC had misread the Federal Circuit’s earlier opinion, and directed the ITC to consider whether to rescind or modify the civil penalty in light of the final judgment of invalidity of the asserted patent claims.

DBN Holding and BDN are represented by Peter Brann, David Swetnam–Burland, and Stacy Stitham in the litigation.