[Federal Register Volume 85, Number 152 (Thursday, August 6, 2020)]
[Notices]
[Pages 47812-47813]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-17139]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-854 (Remand)]


Certain Two-Way Global Satellite Communication Devices, System, 
and Components Thereof; Notice of Commission Determination To Deny a 
Petition To Rescind or Modify a Civil Penalty Order; Termination of 
Remand Proceeding

AGENCY: International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to (1) deny a petition to rescind, or in the 
alternative, modify a civil penalty order; and (2) terminate the 
proceeding on remand from the U.S. Court of Appeals for the Federal 
Circuit.

FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-2310. Copies of non-
confidential documents filed in connection with this investigation may 
be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email 
[email protected]. General information concerning the Commission may 
also be obtained by accessing its internet server at https://www.usitc.gov. Hearing-impaired persons are advised that information on 
this matter can be obtained by contacting the Commission's TDD 
terminal, telephone 202-205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted Inv. No. 337-TA-
854 (Enforcement Proceeding) on May 24, 2013, based on an enforcement 
complaint filed on behalf of BriarTek IP, Inc. (``BriarTek'') of 
Alexandria, Virginia. 78 FR 31576-77 (May 24, 2013). The complaint 
alleged violations of the April 5, 2013, consent order (``the Consent 
Order'') issued in the underlying investigation by the continued 
practice of prohibited activities such as selling or offering for sale 
within the United States after importation any two-way global satellite 
communication devices, system, or components thereof that infringe one 
or more claims of U.S. Patent No. 7,991,380 (``the '380 patent''). The 
Commission's notice of institution of the enforcement proceeding named 
as respondents DeLorme Publishing Company, Inc. and DeLorme InReach LLC 
(collectively, ``DeLorme''), now known as DBN Holding, Inc. and BDN 
LLC, all of Yarmouth, Maine. The Office of Unfair Import Investigations 
(``OUII'') was also a party to the enforcement proceeding. Id.
    On June 10, 2014, following review of the presiding administrative 
law judge's enforcement initial determination in the enforcement 
proceeding, the Commission issued a civil penalty order in the amount 
of $6,242,500 for DeLorme's violation of the Consent Order on 227 
separate days. DeLorme appealed the Commission's final determination to 
the U.S. Court of Appeals for the Federal Circuit. During the pendency 
of the appeal, the U.S. District Court for the Eastern District of 
Virginia (``EDVA'') granted summary judgment in a declaratory judgment 
action filed by DeLorme against the patentee, finding the relevant 
claims of

[[Page 47813]]

the '380 patent to be invalid. After requesting and receiving 
supplemental briefing on the issue of the effect, if any, of affirming 
the EDVA summary judgment on the Commission's final determination, the 
Federal Circuit, on the same date, affirmed both the $6,242,500 
Commission civil penalty order and the EDVA summary judgment of 
invalidity. See DeLorme v. ITC, 805 F.3d 1328 (Fed. Cir. 2015) 
(``DeLorme I''); DeLorme Publishing Co. v. BriarTek IP, Inc., 622 
Fed.Appx. 912 (Fed. Cir. 2015).
    On December 22, 2015, following issuance of the Federal Circuit's 
decision in DeLorme I, DeLorme filed a petition to rescind, or in the 
alternative, to modify the civil penalty order under Commission Rule 
210.76(a)(1) because of ``changed conditions,'' i.e., the EDVA 
invalidity judgment and the affirmance of that judgment. Stating that 
the arguments raised by DeLorme involved issues that could have been 
raised in DeLorme I or were raised and rejected by the Federal Circuit 
in DeLorme I, the Commission denied DeLorme's petition based on res 
judicata. DeLorme appealed the Commission's final determination denying 
its petition to the Federal Circuit. The Court reversed the 
Commission's final determination and remanded the case for 
consideration of DeLorme's petition. See DBN Holding, Inc. v. ITC, 755 
Fed.Appx. 993, 2018 WL 6181653 (Fed. Cir. Nov. 27, 2018) (``DeLorme 
II'') (finding that although there is no requirement that the civil 
penalty be rescinded because of the invalidity finding, the Commission 
nevertheless should have considered DeLorme's petition). The Federal 
Circuit issued its mandate on January 18, 2019.
    On March 27, 2019, the Commission issued an order to the parties 
requesting briefing regarding whether the Commission should rescind or 
modify the civil penalty order in light of the final judgment of 
invalidity of the relevant claims of the '380 patent in accordance with 
DeLorme II. DeLorme, BriarTek, and OUII filed their initial submissions 
on April 25, April 26, and April 26, 2019, respectively. These parties 
filed their response submissions on May 12, May 13, and May 12, 2019, 
respectively.
    Having reviewed the record in this investigation, including the 
parties' written submissions, the Commission has determined to deny 
DeLorme's petition to rescind, or in the alternative, modify the civil 
penalty order. The Commission has also issued an opinion explaining the 
basis for the Commission's action and has terminated the proceeding on 
remand from the Federal Circuit.
    The Commission vote for this determination took place on July 31, 
2020.
    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: July 31, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-17139 Filed 8-5-20; 8:45 am]
BILLING CODE 7020-02-P