NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

DBN HOLDING, INC., BDN LLC,

Appellants

v.

INTERNATIONAL TRADE COMMISSION,

Appellee

______________________ 

2017-2128

______________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-854.

______________________ 

Decided: November 27, 2018

______________________ 

PETER J. BRANN, Brann & Isaacson, Lewiston, ME, 

argued for appellants. Also represented by STACY O.

STITHAM, DAVID SWETNAM-BURLAND. 

 CLINT A. GERDINE, Office of the General Counsel, 

United States International Trade Commission, Washington, DC, argued for appellee. Also represented by 

DOMINIC L. BIANCHI, WAYNE W. HERRINGTON. 

 ______________________ 
2 DBN HOLDING, INC. v. ITC

Before PROST, Chief Judge, MOORE and REYNA, Circuit 

Judges.

REYNA, Circuit Judge. 

DBN Holding, Inc. and BDN LLC appeal from a decision of the U.S. International Trade Commission, which 

denied their petition to rescind or modify a civil penalty

order. The Commission denied the petition on the basis of 

“res judicata” in light of our decision in DeLorme Publishing Co. v. Int’l Trade Comm’n, 805 F.3d 1328 (Fed. Cir. 

2015). We conclude that the Commission erred by relying

on res judicata because neither the Commission nor this 

court has considered whether to rescind or modify the 

civil penalty in light of the invalidity of the relevant 

patent claims. We reverse and remand. 

BACKGROUND

1. The Past Appeals

In September 2012, the U.S. International Trade 

Commission (“Commission”) instituted a Section 337

investigation (Inv. No. 337-TA-854) to determine whether 

imports by DeLorme Publishing Company, Inc. 

and DeLorme InReach LLC (collectively, “DeLorme”)1 of 

certain satellite communication devices infringed U.S. 

Patent No. 7,991,380 (“the ’380 patent”). DeLorme executed a Consent Order Stipulation, proposing to terminate the investigation. J.A. 123–25. In April 2013, the 

Commission terminated the investigation. 

In May 2013, the Commission instituted an enforcement proceeding based on allegations that DeLorme had 

violated the Consent Order. The Commission ultimately 

1 Appellant DBN Holding, Inc. was formerly known 

as DeLorme Publishing Company, Inc. Appellant BDN 

LLC was formerly known as DeLorme InReach LLC. 

 
DBN HOLDING, INC. v. ITC 3

determined that DeLorme had violated the Consent Order 

and assessed a civil penalty of $6.2 million. 

Shortly after institution of the May enforcement proceeding, DeLorme filed a declaratory judgment action in 

the Eastern District of Virginia, seeking judgment of 

noninfringement and invalidity of certain claims of the 

’380 patent. The claims challenged were the same claims 

asserted in the Section 337 investigation. The district 

court subsequently granted summary judgment of invalidity in favor of DeLorme, finding that the claims asserted 

in the enforcement proceeding and subject to the Consent 

Order were invalid. The district court’s invalidity judgment was issued after the Commission had assessed the 

civil penalty in the enforcement proceeding. 

The respective losing parties appealed the decisions of 

both the Commission and the district court. This court

received the appeals for consideration as companion 

cases. Prior to oral arguments, we asked for supplemental briefing on “[w]hat effect, if any, would an affirmance of the district court’s summary judgment of 

invalidity in [the district court case] have on the [Commission’s] enforcement of the Consent Order at issue in 

this appeal?” J.A. 469. The Commission argued that if 

we affirmed the invalidity judgment, further proceedings 

before it would be necessary because the effect of the 

invalidity of the patent had not been considered by the 

Commission. DeLorme Publ’g Co. v. Int’l Trade Comm’n, 

No. 2014-1572, Dkt. No. 64 at 3–4 (“ITC Suppl. Br.”). The 

Commission pointed to 19 C.F.R. § 210.76, which “has 

been used by the Commission to vacate civil penalties 

which have been assessed for violation of a consent order,” 

as the procedural mechanism for the further proceedings 

it argued were necessary. Id.; see also J.A. 471–72; Certain Neodymium–Iron–Boron Magnets, Magnet Alloys, 

and Articles Containing Same, Inv. No. 337-TA-372, 64 

Fed. Reg. 56,515–16 (Oct. 20, 1999) (“Magnets”) (relying 

on Section 337 and 19 C.F.R. § 210.76 as authority for 
4 DBN HOLDING, INC. v. ITC

vacating a civil penalty order). According to the Commission, to seek modification “DeLorme [could] file a petition 

under [19 C.F.R. §] 210.76 based on affirmance of the 

invalidity judgment.” ITC Suppl. Br. at 4.

On November 12, 2015, this court issued its decisions

in both appeals. First, we summarily affirmed the district 

court’s summary judgment of invalidity. DeLorme Publ’g 

Co. v. BriarTek, 622 Fed. App’x. 912, 913 (Fed. Cir. 2015). 

Second, we affirmed the Commission’s determination that 

DeLorme had violated the Consent Order and its assessment of the civil penalty. See DeLorme Publ’g Co. v. Int’l 

Trade Comm’n, 805 F.3d 1328 (Fed. Cir. 2015) (“DeLorme 

I”). Specifically, we held that the Commission acted 

within the scope of its authority when it imposed the civil 

penalty upon finding that DeLorme had violated the 

Consent Order. Id. at 1335.

2. This Appeal

On December 22, 2015, DeLorme filed a petition before the Commission to rescind or modify the civil penalty

order pursuant to 19 C.F.R. § 210.76 in light of the judgment of invalidity of the asserted claims of the ’380 patent. J.A. 467–78. DeLorme argued that the civil penalty

should be set aside or modified based on “changed conditions in fact or law or in the public interest.” Id.; see also 

19 C.F.R. § 210.76(a)(l). On April 4, 2017, the Commission denied DeLorme’s petition, stating that

[t]he “changed conditions” identified by DeLorme 

in its petition are: (1) the EDVA invalidity judgment; and (2) the affirmance of that judgment. As 

noted above, the Federal Circuit found that it, rather than the Commission, should address the issue of whether the affirmance of the EDVA 

invalidity judgment affected the Commission’s enforcement determination and decided that issue 

adversely to DeLorme, affirming the Commission’s enforcement determination. The full Court 
DBN HOLDING, INC. v. ITC 5

denied DeLorme’s petition for hearing en banc 

and the Supreme Court denied certiorari. The 

public interest arguments raised by DeLorme involve issues that could have been raised in the 

appeal or were raised and rejected by the Federal 

Circuit. The matter is therefore res judicata. 

J.A. 7–8. DeLorme appeals the Commission’s decision to 

deny its petition to rescind or modify the civil penalty. 

DISCUSSION

DeLorme argues that the Commission misread our

DeLorme I opinion and erred when it refused, on the basis 

of res judicata, to consider whether the civil penalty 

should be rescinded or modified. We agree. 

In an appeal of a denial of a petition to rescind or 

modify a civil penalty order of the Commission pursuant 

to 19 C.F.R. § 210.76, we review the Commission’s decision for abuse of discretion. See 5 U.S.C. § 706(2)(A). “An 

abuse of discretion occurs where the decision is based on 

an erroneous interpretation of the law, on factual findings 

that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant 

factors.” Star Fruits S.N.C. v. United States, 393 F.3d 

1277, 1281 (Fed. Cir. 2005). Whether, based on the facts 

of this case, a claim is barred by the doctrine of res judicata is a legal determination reviewed de novo. Faust v. 

United States, 101 F.3d 675, 677 (Fed. Cir. 1996).

We first examine the Commission’s decision not to 

consider DeLorme’s petition on the ground that “the 

matter is . . . res judicata.” J.A. 8. The term res judicata 

is used narrowly to “denote ‘claim preclusion’ and more 

generally to denote either ‘claim preclusion’ or ‘issue 

preclusion.’” Faust, 101 F.3d at 677. It is unclear whether the Commission was referring to issue preclusion or 

claim preclusion. Under claim preclusion, a final judgment on the merits of an action precludes relitigation of 
6 DBN HOLDING, INC. v. ITC

issues that were or could have been raised by the parties 

or their privies in that action. Allen v. McCurry, 449 U.S. 

90, 94 (1980). Under issue preclusion, “once a court has 

decided an issue of fact or law necessary to its judgment, 

that decision may preclude relitigation of the issue in a 

suit on a different cause of action involving a party to the 

first case.” Id. For either issue or claim preclusion to 

apply, a second, separate case must exist. See id. Here, 

where we have a continuation of the same proceeding, 

Investigation Number 337-TA-854, neither issue nor 

claim preclusion apply. 

The Commission might have more appropriately referred to the basis of its denial of the petition as barred by

the “law of the case” doctrine, rather than generally 

invoking “res judicata.” The law of the case doctrine 

refers to courts’ general practice of refusing to reconsider 

issues already decided. Messinger v. Anderson, 225 U.S. 

436, 444 (1912); see also 18 Wright & Miller, Fed. Prac. & 

Proc. Juris. §§ 4401–4402 (3d ed. 1998) 

(“[R]econsideration of matters already resolved ordinarily 

is referred to [as] law-of-the-case theory” or “direct estoppel.”). “The law of the case doctrine is limited to issues 

that were actually decided, either explicitly or by necessary implication” earlier in the litigation. Toro Co. v. 

White Consol. Indus., Inc., 383 F.3d 1326, 1335 (Fed. Cir. 

2004). For the law of the case to apply, this court would

have had to have decided the issues raised in this appeal, 

explicitly or by necessary implication. As explained 

below, neither the Commission nor this court has decided 

whether the Commission should rescind or modify the 

civil penalty in light of the district court’s grant of summary judgment of invalidity. 

This court recognized in DeLorme I that 19 U.S.C. 

§ 1337(f)(2) authorizes the Commission to impose a penalty for violation of its orders, including consent orders, 

subject to review by this court. San Huan New Materials 

High Tech, Inc. v. Int’l Trade Comm’n, 161 F.3d 1347, 
DBN HOLDING, INC. v. ITC 7

1352, 1355–56 (Fed. Cir. 1998). The procedure for requesting that the Commission modify or set aside such 

orders is found at 19 C.F.R. § 210.76, entitled “Modification or rescission of exclusion orders, cease and desist 

orders, consent orders, and seizure and forfeiture orders”: 

Whenever any person believes that changed conditions of fact or law, or the public interest, require that an exclusion order, cease and desist 

order, or consent order be modified or set aside, in 

whole or in part, such person may request, pursuant to section 337(k)(1) of the Tariff Act of 1930, 

that the Commission make a determination that 

the conditions which led to the issuance of an exclusion order, cease and desist order, or consent 

order no longer exist. 

19 C.F.R. § 210.76(a)(1); see also id. § 210.76(a)(2). 

We have affirmed the Commission’s authority to rescind or modify its orders under § 210.76. E.g., SiRF 

Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1324 n.2 

(Fed. Cir. 2010) (noting that appellants may petition for 

modification or rescission of certain orders under § 210.76 

if “no longer in violation of [section 337]”) (alteration in 

original); Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 

1321, 1338 (Fed. Cir. 2009). The Commission has relied 

on § 210.76 to vacate a civil penalty order after the parties 

entered into a license agreement, even when this court 

had affirmed the imposition of the same civil penalty. 

Magnets, 64 Fed. Reg. at 56,515; San Huan, 161 F.3d at 

1355–56. 

Nothing in DeLorme I bars the Commission from modifying or rescinding the civil penalty order in this case 

under 19 C.F.R. § 210.76. The Commission’s civil penalty 
8 DBN HOLDING, INC. v. ITC

order was properly based on the six “EPROM factors”2

and on the basis that the ’380 patent’s claims were valid. 

DeLorme I, 805 F.3d at 1332–33. To be clear, we rejected 

DeLorme’s argument that the Commission’s penalty was 

“grossly excessive,” but we did not divest the Commission 

of the authority to later rescind or modify its civil penalty

order in light of the invalidity judgment, nor did we hold 

that the invalidity judgment should have no impact on 

any such future assessment. 

The Commission apparently misunderstood this court 

when we said that “the penalty or sanction cannot be 

vacated by subsequent events such as invalidation of the 

claims.” Id. at 1336 (discussing ePlus, Inc. v. Lawson 

Software, Inc., 789 F.3d 1349 (Fed. Cir. 2015)). This 

statement relates to the principle that, where the order 

upon which a civil penalty is based is final and no longer 

subject to appeal, rescission of that civil penalty is not 

necessarily required upon invalidation of the claims

without consideration of other factors. See id. 

In ePlus, we held that a compensatory civil award for 

violating a non-final injunction “must be set aside in light 

of the cancellation of [the] claim” on which the injunction 

was based. ePlus, 789 F.3d at 1361 (emphasis added). 

We did not decide “whether civil contempt sanctions 

would survive if the injunction had been final at the time 

the district court imposed civil contempt sanctions.” Id. 

2 We have affirmed the Commission’s use of six factors in determining the amount of a civil penalty. See 

San Huan, 161 F.3d at 1362. The six “EPROM factors” 

are (1) the good or bad faith of the respondent, (2) the 

injury to the public, (3) the respondent’s ability to pay, (4) 

the extent to which the respondent has benefited from its 

violations, (5) the need to vindicate the authority of the 

Commission, and (6) the public interest. DeLorme I, 805 

F.3d at 1333. 

 
DBN HOLDING, INC. v. ITC 9

at 1358. We also observed that “[i]t is well established 

that ‘[v]iolations of an order are punishable as criminal 

contempt even though the order is set aside on appeal . . . or though the basic action has become moot.’” Id. 

(quoting United States v. United Mine Workers of Am., 

330 U.S. 258, 294 & n.60 (1947)). We noted that, in 

contrast to a civil award, if the defendant had been found 

guilty of criminal contempt, the resulting penalties 

“would not be set aside simply because” the claim forming 

the basis of an injunction had been cancelled. ePlus, 789 

F.3d at 1356 (emphasis added). 

In DeLorme I, we observed that the punitive nature of 

the civil penalty, which is paid to the government, makes 

it more akin to a criminal sanction than the civil contempt sanctions in ePlus. 805 F.3d at 1336 & n.4. Here, 

the civil penalty is based on a final, non-reviewable Consent Order drafted by DeLorme that has “attributes of 

both contracts and of judicial decrees” and is distinct from 

the non-final, reviewable injunction in ePlus. Id. at 1333. 

There is no requirement that the civil penalty in this case 

be rescinded simply because the ’380 patent’s claims were 

invalidated. Our holding in DeLorme I that the invalidation of the ’380 patent’s claims had no retroactive effect on 

the Consent Order does not bar the Commission from 

determining whether to modify or rescind the civil penalty 

under 19 C.F.R. §§ 210.76(a)(1) or (a)(2).3 The court in 

DeLorme I did not decide whether the Commission should

rescind or modify the civil penalty in light of the final 

invalidity judgment, a question that could not have been 

raised or decided earlier in the case. See Beloit Corp. v. 

Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (“[T]his 

court does not sit to review what the Commission has not 

3 As discussed above, the Commission has relied on 

§ 210.76 to vacate a civil penalty. 

 
10 DBN HOLDING, INC. v. ITC

decided”). The Commission’s application of res judicata

was therefore error.

CONCLUSION

We hold that the Commission is not barred from reassessing the EPROM factors and determining whether to 

modify or rescind the civil penalty pursuant to 19 C.F.R. 

§ 210.76 based on the final judgment of invalidity. The 

Commission erred in finding DeLorme’s arguments were 

barred by res judicata. We therefore reverse the Commission’s res judicata determination and remand for the 

Commission to consider whether to rescind or modify the 

civil penalty in light of the final judgment of invalidity of 

the relevant claims of the ’380 patent. 

REVERSED AND REMANDED

COSTS

No costs.