Patent Case Summaries March 9, 2022

Patent Case Summaries | Week Ending March 4, 2022

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

DBN Holding, Inc., et al. v. ITC, No. 2020-2342 (Fed. Cir. (ITC) Mar. 1, 2022). Opinion by Reyna, joined by Moore and Newman.

This appeal was the fourth in a line of appeals relating to a consent order that DBN entered into with the International Trade Commission.

Under the consent order, DBN had agreed not to import certain products that were the subject of patent infringement allegations. In a separate proceeding, a district court determined that the involved patent claims were invalid. Relying on that ruling, DBN then imported the products that were the subject of the consent order. The ITC was notified of DBN’s actions and determined that DBN violated the consent order, and thus imposed on DBN a $6,242,500 civil penalty for violating the order. These events led to a series of appeals.

In the first appeal, the Federal Circuit affirmed the district court’s decision invalidating the patent claims. In the second appeal, the Federal Circuit held that (1) the ITC did not abuse its discretion in imposing the civil penalty, and (2) the invalidity ruling did not negate DBN’s pre-invalidation violations of the consent order.

Following those two appeals, DBN filed a petition with the ITC to rescind or modify the civil penalty order. The ITC denied the request on res judicata grounds, leading to a third appeal. The Federal Circuit disagreed as to res judicata and thus “remanded for the ITC to decide, in the first instance, whether to rescind or modify the civil penalty in light of our decision that the relevant patent claims are invalid.” On remand, after analyzing the merits of DBN’s petition, the ITC refused to rescind or modify the civil penalty order, prompting DBN to initiate this fourth appeal.

The Federal Circuit affirmed, concluding “that the ITC’s remand determination is based on a correct interpretation of law and findings that are reasonable and supported by substantial evidence.” In particular, the Federal Circuit disagreed with DBN that precedent and ITC practice support rescinding or modifying the civil penalty order. That determination is committed to the ITC’s discretion, and the Federal Circuit saw no abuse of discretion in the ITC’s analysis. The ITC analyzed the pertinent factors and reasonably concluded that those factors do not require rescission or modification of the civil penalty order.

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