DBN Holding, Inc. v. ITC

DBN Holding, Inc. v. ITC

Opinion

Reyna, Circuit Judge.

DBN Holding, Inc. and BDN LLC appeal the U.S. International Trade Commission's remand determination denying their petition to rescind or modify the civil penalty imposed by the International Trade Commission for violations of a consent order. In a prior appeal, we instructed the International Trade Commission to assess on remand "whether to modify or rescind the civil penalty pursuant to 19 C.F.R. § 210.76 based on the final judgment of invalidity" of the patent asserted in the underlying Section 337¹ investigation.² DBN Holding, Inc. v. Int'l Trade Comm'n, 755 F. App'x 993, 998 (Fed. Cir. 2018) (non-precedential). On remand, the International Trade Commission determined that the civil penalty did not require modification or rescission and therefore denied the petition. Because we discern no abuse of discretion [*2]  in the International Trade Commission's determination, we affirm.

Background³

This is the fourth appeal relating to this case that has come to our court. See DeLorme Publ'g Co. v. BriarTek IP, Inc., 622 F. App'x 912, 913 (Fed. Cir. 2015) (non-precedential) ("DBN I"); DeLorme Publ'g Co. v. Int'l Trade Comm'n, 805 F.3d 1328, 1330 (Fed. Cir. 2015) ("DBN II"); DBN Holding, Inc. v. Int'l Trade Comm'n, 755 F. App'x 993, 994 (Fed. Cir. 2018) (non-precedential) ("DBN III"). Given this lineage, we do not repeat the extensive background information from those prior appeals, and we focus on those background and procedural details necessary for us to review and resolve this appeal.

On November 12, 2015, we issued both DBN I and DBN II. In DBN I, we affirmed the Eastern District of Virginia's grant of summary judgment invalidating the same patent claims that patent owner BriarTek IP, Inc. ("BriarTek") had asserted against DBN in a parallel investigation before the U.S. International Trade Commission ("ITC") under Section 337. See DBN I, 622 F. App'x at 913 (affirming invalidation of claims 1, 2, 5-12, 17, 34, and 35 of U.S. Patent No. 7,991,380); see also DBN II, 805 F.3d at 1333 (listing claims 1, 2, 5, 10-12, and 34 as asserted claims in the ITC investigation). In DBN II, we held that (1) the ITC did not abuse its discretion in imposing on DBN a $6,242,500 civil penalty for violating the consent order⁴ DBN signed in order to terminate the ITC investigation, and that (2) our affirmance in DBN I of the district court's invalidation [*3]  of the asserted claims did not negate—under the consent order's unambiguous terms—DBN's pre-invalidation violations of the consent order. 805 F.3d at 1333-34.

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