by Dennis Crouch
DBN (formerly DeLorme) v. US International Trade Commission (Supreme Court 2016)
In addition to district court infringement litigation, U.S. law offers a second avenue for patent enforcement – the United States International Trade Commission (USITC). In today’s free-trade environment, the USITC’s role is somewhat counter — protecting of U.S. industry. A substantial portion of USITC work involves enforcement actions to prohibit importation into the U.S. of “articles that … infringe a valid and enforceable” patent. See 19 U.S.C. 1337.
Despite the statutory language “articles that . . . infringe”, in Suprema an en banc Federal Circuit held that the USITC has the power to block importation based upon an inducement theory of infringement — even if the imported products themselves are not infringing. (6 – 4 en banc decision)
In a well written petition, DBN has challenged the holding of Suprema – asking “Whether the International Trade Commission’s jurisdiction over the importation of ‘articles that … infringe a valid and enforceable’ patent extends to articles that do not infringe any patent.”
The case also involves an interesting separation of powers issue — although the USITC found the patent enforceable, a district court found the patent invalid. DBN terms this a “zombie patent” penalty. In the case, the ITC first issued the exclusion order and the patent was later found invalid. In that interim, DBN violated the exclusion order and the ITC assessed a $6 million contempt penalty that is being challenged in the second question presented: “Whether the Federal Circuit erred in affirming the Commission’s assessment of civil penalties for the domestic infringement of a patent that has been finally adjudicated to be invalid.”