PORTLAND, Maine — Mapmaker DeLorme has asked the U.S. Supreme Court to review a $6.2 million penalty against it in a case that has drawn attention from some of the country’s largest consumer technology companies.
Those companies have said the case, as it stands, leaves the U.S. International Trade Commission with too much authority to pursue penalties for patent infringement allegations.
The case has another twist in that key claims of the allegedly violated patent have since been invalidated in a separate federal court case brought by DeLorme.
“The thought that they could penalize someone for importing parts that don’t infringe any patent — and that the patent is invalid — smacks of unfairness,” said Peter Brann, the attorney for DeLorme who led the case through federal court.
DeLorme and its sister satellite mapping company, InReach, filed their petition last week with the U.S. Supreme Court, which on Monday notified the First Circuit Court of the request.
The case began when the Virginia-based BriarTek Inc. filed a complaint with the International Trade Commission, alleging that an imported plastic belt clip used on DeLorme’s InReach devices “induced infringement” of part of its patent for a satellite communication system.
“The fastening implement can be used to attach the user unit to the user … such as by providing a belt clip or pocket clip for holding the user unit,” the patent reads, in part.
A federal judge invalidated certain claims of that patent last year in a ruling upheld in December by the U.S. Court of Appeals for the Federal Circuit.
DeLorme has argued that the invalidation of those patent claims also should nullify the $6.2 million penalty assessed against it by the International Trade Commission. The commission assessed that penalty after finding DeLorme violated a consent order not to import certain infringing belt clips for its InReach devices.
In a court brief supporting DeLorme’s second challenge of the International Trade Commission ruling to a federal court, major electronics manufacturers and retailers including Dell, HTC, HP, Vizio, QVC and others wrote in support of further review of the case, with concern that upholding the penalty against DeLorme represents “a dramatic enlargement of the [International Trade Commission]’s jurisdiction” in patent cases.
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.
The lawsuit predates GPS giant Garmin’s move to purchase DeLorme earlier this year in a deal that closed in March.
Ted Gartner, Garmin’s spokesman, told the Bangor Daily News in February that the company is not taking on any liability for those penalties with the acquisition and that the company is not worried about any related legal challenges in the future.
The Supreme Court will now decide whether to take up the case, a decision Brann said he expects in about 60 days. Brann said that the Washington, D.C., firm Sidley Austin will lead that effort.