We previously noted that the Commission does not believe it is required to vacate a civil penalty order just because the litigants settle a case. The Federal Circuit's decision in DBN Holdings, Inc. v. ITC, No. 17-2128 (Fed. Cir. Nov. 27, 2018), adds nuance to this point. On the one hand, the Court held that the ITC was required to consider whether to rescind a civil penalty for infringing a consent order on a now-invalidated patent. On the other hand, the Court left open the possibility that the ITC could refuse to do so.
In an earlier ITC proceeding, the patentee, DBN Holdings, Inc., and the accused infringer, DeLorme Publishing Co., stipulated to a consent order in the ITC. DeLorme then violated the consent order, and DBN moved for sanctions for civil contempt. The Commission issued a civil penalty. Concurrently, with DBN's motion for sanctions, DeLorme brought a declaratory-judgment suit, challenging the validity of DBN's patent. Shortly after the ITC issued its
