April 22, 2018
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DeLorme leader says fight is on over $6.2 million patent infringement penalty

By Darren Fishell, BDN Staff

PORTLAND, Maine — The Yarmouth-based map maker DeLorme wants to overturn a $6.2 million patent infringement penalty assessed by federal regulators either through appeal or by invalidating the patent it was found to have infringed.

Mike Heffron, the company’s president and CEO, said in a telephone interview Wednesday that “to be accused of [patent infringement] by a federal agency is something that we’re not going to just sit still for.”

If upheld, the penalty would be “very significant” to the company, according to Heffron. But Peter Brann, the company’s attorney, said he has no expectation the company will pay what he called “an absurd amount.”

“The size of the penalty is in our view completely out of proportion to the allegations in the case,” Brann said.

He said the ruling does not mean any immediate changes for DeLorme, and sales of its inReach satellite communication device will continue as the company seeks to overturn the penalty.

At issue is whether the company violated a consent order signed in March 2013 that stipulated the company should not import any products that infringe on a patent for two-way satellite communication technology held by the Virginia-based company BriarTek.

Brann said that DeLorme does not yet have the full decision from the U.S. International Trade Commission, which investigates cases of imported goods alleged to infringe on patents, but the company plans to appeal the decision to the U.S. Court of Appeals for the Federal Circuit, a process he expects could take more than a year.

Joseph Landa, BriarTek’s president, said in a statement emailed to the Bangor Daily News that his company was pleased with the decision.

“We appreciate the effort that the ITC has put into considering all of the facts in this case and agree with their ruling,” Landa said.

While the full details of the ITC’s decision aren’t yet public, its penalty issuance Monday indicated that it found DeLorme violated the consent order regarding BriarTek’s patent, No. 7,991,380, through sales of its inReach 1.5 and inReach SE devices.

Heffron said Wednesday that the company had retooled its production process in response to the consent order, moving assembly of the devices to a new manufacturing facility in Yarmouth. All imported parts, he said, come through other vendors and are not imported directly by his company.

“We are very careful at the component level to make sure that nothing we import or consider importing would be considered an infringement for that patent,” Heffron said.

In addition to the appeal, Brann said the company is moving ahead with a lawsuit in federal court in Virginia that asks a judge to invalidate BriarTek’s satellite patent, arguing that it is not an original invention, and there were prior instances of the technology when BriarTek applied for the patent.

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