PORTLAND, Maine — As Maine mapmaker DeLorme gets courted by GPS giant Garmin, some of the world’s largest electronics companies have taken its side in court over a patent infringement battle with trade regulators.
Dell, HTC, HP, Vizio, QVC and others have written to the U.S. Court of Appeals for the Federal Circuit in support of a new hearing for DeLorme in the case that led to a $6.2 million patent infringement penalty from the U.S. International Trade Commission.
The array of electronics and retail giants raised concern that the penalty and court rulings upholding that penalty constitute “a dramatic enlargement of the [International Trade Commission]’s jurisdiction” in patent cases.
A panel of three judges at the U.S. Appeals Court for the Federal Circuit in November 2015 upheld the $6.2 million penalty against DeLorme, despite also upholding a lower court’s invalidation of the patent that was the basis of the penalty.
“What is the public policy behind this, that you would go after an American company building products in America that do not infringe any valid patent?” Peter Brann, the attorney representing DeLorme, said in a telephone interview. “That doesn’t make any sense.”
Virginia-based BriarTek Inc. had filed the complaint with the International Trade Commission that led to the penalty. It alleged DeLorme violated a previous consent order about importing certain parts.
DeLorme responded by challenging the company’s patent in federal court in Virginia, which led to the first decision upholding the penalty and validity of the consent order but throwing out the patent.
In their court brief supporting DeLorme, the major electronics manufacturers and retailers expressed concern about just how the International Trade Commission came to claim jurisdiction over a complaint from BriarTek, which had a patent for a two-way global satellite communication device.
The company’s complaint was based on a plastic belt clip that they and the International Trade Commission found “induced infringement” of the patent by creating a satellite communication system similar to that outlined in BriarTek’s application.
“The fastening implement can be used to attach the user unit to the user… such as by providing an belt clip or pocket clip for holding the user unit,” the patent reads, in part.
The electronics manufacturers supporting DeLorme’s new trial argued that federal law only gives the International Trade Commission the right to prohibit importing, selling into the country or selling after importation any articles that infringe on a valid and enforceable patent.
Those manufacturers see two major problems there.
First, they argued that the patent was found invalid and shouldn’t be the basis for enforcement. But they raised the broader concern that the ruling was based on the importation of a belt clip that itself wasn’t the subject of any patent.
They argue the panel decision expands the International Trade Commission’s authority to cover any domestically made item with an imported part that doesn’t specifically violate any patent.
In other words, they argued that the decision would make a new world of patent disputes subject to enforcement before the International Trade Commission and not just in federal court.
“They say that if you import one screw and then use it in a product that allegedly infringes on a patent, then it could be heard [before the International Trade Commission],” Brann said.
Separately, Brann said BriarTek on Wednesday filed a petition for the U.S. Supreme Court to hear its challenge to the invalidation of its patent by the federal circuit and appeals courts.
The International Trade Commission is due to file a response to DeLorme’s request for a hearing before the full appeals court.
The International Trade Commission in January asked for more time to file that response, beyond an initial Jan. 28 deadline.