13
Jun
By Eric Schweibenz
On June 9, 2014, the International Trade Commission (“the Commission”) issued a notice and order in Certain Two-Way Global Satellite Communication Devices, System and Components Thereof (Inv. No. 337-TA-854) determining to impose a civil penalty on Respondents in the amount of $6,242,500.

By way of background, the Commission instituted the underlying investigation on September 18, 2012 based on BriarTek IP, Inc.’s (“BriarTek”) complaint of August 17, 2012.  See our September 19, 2012 post for more details.  On March 15, 2013, former ALJ Robert K. Rogers, Jr. granted a motion by DeLorme Publishing Co., Inc. and DeLorme InReach, LLC (collectively, “DeLorme”) to terminate the investigation and for entry of a proposed consent order (“the consent order”).  See our March 19, 2013 post for more details.  In the consent order, DeLorme agreed that it would not import or sell two-way global satellite communication devices, systems, or components thereof that infringe BriarTek’s U.S. Patent No. 7,991,380 (the ‘380 patent) after April 1, 2013.  On April 10, 2013, BriarTek filed an enforcement complaint alleging that DeLorme violated the consent order.  See our April 11, 2013 post for more details.

In the enforcement initial determination (“EID”), ALJ Dee Lord found that DeLorme had violated the consent order with respect to its sale after importation of accused components of the InReach 1.5 device.  However, the ALJ found no violation of the consent order with respect to the InReach SE device.  ALJ Lord also found no violation with respect to activation of InReach devices after the effective date of the consent order, where those devices had been sold prior to the effective date of the consent order.  ALJ Lord further found that enforcement measures are appropriate for DeLorme’s violation of the consent order, and recommended a civil penalty of $637,500.  See our March 24, 2014 post for more details on the EID.

According to the notice and order, on April 23, 2014, the Commission determined to review the EID in part, and on review, determined to reverse-in-part and vacate-in-part the EID’s findings.  Although the ALJ’s finding of a violation with respect to infringing InReach 1.5 devices was not reviewed, the Commission reversed the ALJ’s finding of no induced infringement and thus no violation of the Consent Order with respect to InReach SE devices and InReach devices sold before and activated after the effective date of the Consent Order.  The Commission requested briefing on the amount of the civil penalty to be imposed and on the public interest. 

After reviewing the record, including the EID and the parties’ submissions, the Commission determined to impose a civil penalty of $6,242,500 on DeLorme for violation of the Consent Order on 227 separate days.  The Commission also terminated the enforcement proceeding.
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