# United States **Court of Appeals**  **for the Federal Circuit**

______________________
DELORME PUBLISHING C OMPANY, INC., DELORME INREACH LLC, Appellants

v.

INTERNATIONAL TRADE COMMISSION, Appellee

______________________

2014

- 1572

______________________ Appeal from the United States International Trade Commission in Investigation No. 337

- TA

- 854.

______________________

Decided: November 1 2 , 2015

______________________

P ETER J. B RANN , Bran n & Isaacson, Lewiston, ME, argued for appellants. Also represented by S TACY O. S TITHAM , D AVID S WETNAM -B URLAND

.

C LINT A. G ERDINE , Office of the General Counsel, United States International Trade Commission, Washin gton, DC, argued for appellee. Also represented by D OMINIC L. B IANCHI , W AYNE W. H ERRINGTON

.

______________________
Before M OORE , R EYNA , and T ARANTO , Circuit Judges

.DELORME PUBLISHING C O ., INC

. v. ITC 2

Opinion for the court filed by Circuit Judge M OORE

. O pinion dissenting

- in

- part filed by Circuit Judge T ARANTO

. M OORE , Circuit Judge

. DeLorme Publishing Company , Inc. and DeLorme InReach LLC (collectively, “DeLorme”) appeal from a decision by the International Trade Commission (“Co mmission”) (1) finding that DeLorme violated a consent order by selling InReach 1.5 and SE de vices containing imported components

, and (2) imposing a civil penalty of $6,242,500

. Certain Two

- Way Global Satellite Commun ication Devices, System and Components Thereof , Inv. No. 337

- TA

- 854 (Enforcement) , Comm’n Op

. (June 17, 2014) (J.A. 40

– 90) (“Comm’n Op.”). We affirm

. B ACKGROUND In September 2012, the Commission instituted an i nvestigation to determine if DeLorme was violating se ction 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337
, by importing, sell ing for importation, or selling after importation “ certain two

- way global satellite co mmunication devices, system and components thereof ” that allegedly infringe d claims 1, 2, 5, 10

– 12, and 34 of Br iarTek IP, Inc.’s U.S. Patent No. 7,991,380

. Certain Two

Way Global Satellite Communication Devices, System and Components Thereof , Inv. No. 337

- TA

- 854
, Notice of Institution of Investigation (Sept. 17, 2012) (J.A. 420

– 22). The ’380 patent is directed to emergency monitoring and reporting systems comprising a u ser unit and a monito ring system that communicate through a satellite network. The accused products included DeLorme’s I nReach 1.0 and 1.5 satellite

- communication devices , as well as the software and service plan used with the devices.

In April 2013, the Commission terminated the inve stigation based on entry of a consent order proposed by DeLorme

. Certain Two

- Way Global Satellite Communic a-DELORME PUBLISHING C O ., INC

. v. ITC 3

tion Devices, System and Components Thereof , Inv. No. 337

- TA

- 854, Termination of Investigation (Apr

. 5, 2013) (J.A. 1505

– 06)

. In the consent order, DeLorme agreed to the following:
Upon entry of the proposed Consent Order, D eLorme shall not import into the United States, sell for importation into the United States, or sell or offer for sale within the United Stat es after i mportation any two

- way global satellite commun ication devices , system, and components thereof, that infringe claims 1, 2, 5, 10

– 12, and 34 of the ’380 Patent after April 1, 2013, until the expir ation, invalidation, and/or unenforceability of the ’380 Patent

. Certain Two

- Way Global Satellite Communication Devi ces, System and Components Thereof , Inv. No. 337

- TA

- 854, Consent Order ¶ 1 (April 5, 2013) (J.A. 1507

– 09) (“Co nsent Order”)

. On May 24, 2013, the Commission instituted an e nforcement proceedin g based on BriarTek’s allegations that DeLorme violated the C onsent O rder by, inter alia

, selling I nReach 1.5 and SE devices containing imported comp onents. Four days later, DeLorme filed an action against BriarTek in the United States District Court for the Eastern District of Virginia, seeking declaratory judgment of noninfringement and invalidity of the ’380 patent. While the district court action was pending, the Commi ssion issued a decision in the enforcement proceeding (1) finding that DeLorme viola ted the Consent O rder, and (2) imposing a civil penalty of $6,242,500. Comm’n Op. at 1– 2. DeLorme appeals. We have jurisdiction under 19 U.S.C. § 1337(c) and 28 U.S.C. § 1295(a)(6).

D ISCUSSION We review the Commission’s legal determinations in an enforc ement proceeding without deference and itsDELORME PUBLISHING C O ., INC

. v. ITC 4

factual determinations for substantial evidence. uPI Semiconductor Corp. v. Int’l Trade Comm’n , 767 F.3d 1372, 1377 (Fed. Cir. 2014). “This court must affirm a Commission determination if it is reasonable and su pported by the record as whole, even if some evidence detracts from the Commission’s conclusion.” Id. Consent orders are interpreted as contracts

. Id. Contract inte rpretation is a question of law. Id. W e review interpret ation of a contract or consent order de novo. Id. Patent infringement, whether direct or indirect, is a question of fact. i4i Ltd v. Microsoft Corp. , 598 F.3d 831, 850 (Fed. Cir. 2010). We review claim construction de novo except for subsidiary facts ba sed on extrinsic evidence, which we review for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 841

– 42 (2015). We review the Co mmission’s imposition of a civil penalty under 19 U.S.C. § 1337(f) (2) for abuse of discretion. Ninestar Tec h. Co. v. Int’l Trade Comm’n , 667 F.3d 1373, 1380 (Fed. Cir. 2012).

I.

The Commission determined that DeLorme violated the C onsent O rder with regard to claims 1 and 2 of the ’380 patent. It found that DeLorme (1) assembled the accused InReach 1.5 devices by converting previously imported devices and (2) assembled the accused InReach SE devices using

, inter alia

, imported plastic housing components. It determined that “[u]nder the terms of the Consent Order, DeLorme violates the order if, after entry of th e order, it imports, sells for import ation, or sells or offers for sale within the United States after importation any infringing two

- way global satellite communication devices, system, or components thereof.” Comm’n Op. at 2. It concluded that DeLorme i nduced infringement and violated the C onsent O rder by selling the newly accused devices with instructions to use them in a manner that infringed claims 1 and 2 of the ’380 patent. While i t concluded that DeLorme also induced infringement by activating previously sold InReach devi c-DELORME PUBLISHING C O ., INC

. v. ITC 5

es , such infringement “ did not equate to ” a violation of the C onsent O rder. Id. at 24

– 25.

DeLorme argues that even if the devices infringed the claims, the C onsent O rder did not preclude DeLorme from selling domes tically manufactured devices containing imported, noninfringing components. It arg ues that the terms of the C onsent O rder instead prohibited DeLorme from using imported components only if the components themselves infringed. It argues that the Commission “rewrot e” the Consent O rder to “prohibit not just the use of imported, infringing , components, but also the use of

any imported components.” Appellants ’ Br. 23. It argues that the Commission’s interpretation of the C onsent O rder exceeded its authority to block importation of only “articles that

. . . infringe.” 19 U.S.C. § 1337(a)(1)(B)(i).
We agree with the Commission that DeLorme violated the C onsent O rder by selling InReach 1.5 and SE devices containing imported components with instructions for its
customers to use the devices in an infringing manner

. The C onsent O rder provided that DeLorme could not import, sell for importation, or sell or offer for sale after importation “any two

- way global satellite communication devices, system, and components thereof, t hat infringe claims 1, 2, 5, 10

– 12, and 34 of the ’380 Patent.” Consent Order ¶ 1. Under these terms, DeLorme was precluded from selling infringing devices containing imported co mponents with instructions to infringe

. DeLorme’s remaining arguments agains t the Co mmission’s finding that it violated the C onsent O rder are unpersuasive

. For example, t he claims are not limited as proposed by DeLorme, and substantial evidence supports the Commission’s finding of infringement. Under the Supreme Court’s recent d ecision in Commil USA, LLC v. Cisco Systems , 135 S. Ct. 1920, 1928 (2 015), a good- faith belief in the patent’s invalidity was not a defense to induced infringement. Thus, the Commission did not errDELORME PUBLISHING C O ., INC

. v. ITC 6

in its conclusion that DeLorme violated the C onsent O rder.

II.

The Commission imposed a civil penalty under 19 U.S.C. § 1337(f)(2) of $ 27,500 per day for 227 violati on days , for a total of $ 6,242,500

. Section 1337(f)(2) pr ovides: Any person who violates an order issued by the Commission under paragraph (1) after it has b ecome final shall forfeit and pay to the United States a civil penalty for each day on which an importation of articles, or their sale, occurs in vi olation of the order of not more than the greater of $100,000 or twice the domestic value of t he art icles entered or sold on such day in violation of the order. Such penalty shall accrue to the United States and may be recovered for the United States in a civil action brought by the Commission in the Federal District Court for the District of Colu mbia or for the district in which the violation occurs.

. . . Our court held in San Huan New Materials High Tech, Inc. v. International Trade Commission

, that the Co mmission has the authority to issue § 1337(f)(2) civil pena lties for violation of a consent order. 161 F.3d 1347, 1362 (Fed. Cir. 1998)

. The Commission based its penalty determination in this case on the six “ EPROM factors” adopted by this
court: (1) the good or bad faith of the respondent, (2) the injury to the public, (3) the r espondent’s ability to pay, (4) the extent to which the respondent has benefited from its violations, (5) the need to vindicate the autho rity of the Commission, and (6) the public interest. Comm’n Op. at 27 , 4 2– 50 (citing, e.g., Certain Erasable Programmable Read Onl y Memories (EPROMs) , Inv. No. 337

- TA

- 276 (Enforcement)

, Comm’n Opinion (July 19, 1991) ) ; s ee alsoDELORME PUBLISHING C O ., INC

. v. ITC 7

San Huan , 161 F.3d at 1362

. The Commission noted that the penalty was slightly more than a quarter of the stat utory maximum of $100,000 per day. See 19 U.S. C. § 1337(f)(2). It found that the penalty was “appropriately proportionate to the value that the violative I nReach devices bring to DeLorme” and consistent with the Co mmission’s policy of deterring future violations while not driving DeLorme out of busin ess. Comm’n Op. at 50 (citing , e.g., San Huan , 161 F.3d at 1364).
DeLorme argues that the Commission abused its di scretion by imposing a “grossly excessive” civil penalty. Appellants ’ Br. 55. It argues that the penalty wa s not “proportionate” under the EPROM factor s analysis

. Id. (citing San Huan , 161 F.3d at 1362 ). For example, i t argues that the Commission incorrectly determined that DeLorme acted in bad faith . It also argues that in a ssessing the benefit of the violative sales to DeLorme, the Commi ssion should have looked to the imported comp onents ’ value rather than that of the devices as a whole

. T he Commission did not abuse its discretion in impo sing a civil penalty of $ 6,242,500

. The penalty

— which amounted to $27,500 per day for 227 violation days

— was substantially less than the statutory ceiling of $100,000 per violation per day. See 19 U.S.C. § 1337(f)(2). The Commission took into account the EPROM factors and we see no clear e rror in its fact findings or error in its appl ication of the law. DeLorme has not shown , for example, that the re was clear error in the Commission’s findings regarding DeLorme’s bad faith or that the violative sa les greatly benefited DeLorme. We conclude that the Co mmission did not abuse its discretion in its penalty dete rmination.DELORME PUBLISHING C O ., INC

. v. ITC 8

III.

A. Interpreting the Consent Order

After the Commission issued the decision on appeal in this case

, the Eastern District of Virginia granted su mmary judgment that claims 1 , 2, 5, 10

– 12, 34, and 35 of the ’380 patent are invalid for anticipat ion and obviou sness

. DeLorme Publ ’ g Co. v. BriarTek IP, Inc. , 60 F. Supp. 3d 652 (E.D. Va. 2014). We sought supplemental briefing from the parties as to how, if at all, the Eastern District of Virginia ’s decision impacted the Commission’s enforcement of the C onsent O rder o r appeal.
DeLorme argues that because claims 1 and 2 have been invalidated, 1 the Commission’s enforcement decision and accompanying civil penalty cannot stand. It argues that because the claims are invalid, it “cannot i nduce

. . . infringement [of claims 1 and 2] now, nor be liable for having induced their infringement in the past.” Appellants ’ Supp. Br. 3.

The relevant p arts of the C onsent O rder are as fo llows:

1. U pon entry of the proposed Consent Order, DeLorme shall not import into the United States, sell for importation into the United States, or sell or offer for sale within the United States after i mportation any two

- way global satellite commun ication device s, system, and components thereof, that infringe claims 1, 2, 5, 10

– 12, and 34 of the ’380 Patent after April 1, 2013, until the expir a1 BriarTek appealed the Eastern District of Virgi nia’s invalidity determination and we affirm in a concurrently issued decision. DeLorme Publ ’ g Co. v. BriarTek IP, Inc. , Appeal Nos. 15

- 1169,

- 1241.DELORME PUBLISHING C O ., INC

. v. ITC 9

tion, invalidation, and/or unenforceability of the ’380 Patent.

2. DeLorme shall be precluded from seeking jud icial revi ew or otherwise challenging or contesting the validity of this Consent Order.

. . . 4. The Consent Order shall not apply with respect to any claim of any intellectual property right that has expired or been found or adjudicated invalid or unenforceable by the Commission or a court or agency of competent jurisdiction, provided that such finding or judgment has become final and

non -reviewable.
Consent Order ¶ ¶ 1 , 2, 4

. Interpretation of the C onsent O rder is a question of law. The C onsent O rder in this case is short

— two pages long

— and was drafted by DeLorme. Though we acknowledge that “[c]onsent decrees and orders have attributes both of contracts and of judicial decrees,” United States v. ITT Cont’l Baking Co. , 420 U.S. 223, 237 n.10 (1975 ) , DeLorme agreed to the terms of the Consent Order. We conclude that the Consent Order unambig uously resolves the question of the impact of an invalidity decisio n on the enforcement of the Consent Order

. The C onsent O rder bars certain sales and importat ions “until” one of three events occur s: “expiration, invalidation

, a nd/or unenforceability of the ’ 380 P atent.” Consent Order ¶ 1

. Additionally, it explains that the Consent Order ceases to apply when the patent claim at issue has “expired or been foun d or adjudicated invalid or une nforceable

. . . provided that such finding or judgment has become final and non -reviewable .” Consent Order ¶ 4

. Thus

, the Consent Order identifies three events which will cause it to no longer apply. When one of these events occurs the Consent Order will no longer apply, and D e-DELORME PUBLISHING C O ., INC

. v. ITC 10

Lorme will no longer be constrained by its terms. Until one of th e se events occurs, however, the Consent Order is binding upon DeLorme.
In this case, the Consent Order applied to DeLorme at the t ime it committed the acts found to violate the order. The Consent Order applied to DeLorme even at the time the enforcement decision with the civil penalty issued. 2 DeLorme argu es in its supplemental briefing that the subsequent district court invalidati on of the claims retr oactively eliminates the Consent Order such that we can no longer affirm the civil penalty properly adjudicated by the Commission

. This argument is inconsistent with the plain language of the Consent Order itself. The Order explains that it applies “until” one of the triggering
events. Paragraph 1 contains no language that could be construed as requiring (or even allowing) the trigger ing
events to apply retro actively

. Indeed, DeLorme argues with respect to paragraph 1 that invalidat ion “would end” its obligations

— an argument that is forward -looking. Appellants ’ Suppl. Br. 5. Paragraph 4 similarly provides that the C onsent O rder “shall not apply ” with respect to any claim that “has . . . been” invalid ated. Consent Order ¶ 4. Partic ularly when read in the context of the C onsent O rder as a whole, this pro vision is forward -looking and contain s no language indicating that the invalidation trigger would apply retroactively

. DeLorme’s argument regarding paragraph 4— that the Commission wo uld “no longer” retain jurisdiction over invalidated claims

— is also fo rward -looking. Appellants ’ Suppl. Br. 5.

2 Because our concurrently issued affirmance of the district court’s summary judgment of invalidity is still reviewable, the Consent Order continues to be binding upon DeLorme even now.DELORME PUBLISHING C O ., INC

. v. ITC 11

Indeed in application DeLorme’s argument makes no

sense. DeLorme acknowledges that the expiration and unenforceability triggers would have the same effect as the invalidation trigger because the plain language of the Consent Order treats them identically. If invalidation of claims 1 and 2 were to apply retroactively to eliminate the Commission’s enforcement decision and accompanying penalty, the n expiration of the claims would do the same. Under such a reading of the C onsent O rder, the Commi ssion could determine that DeLorme violated the Consent Order and award a civil penalty in an enforcement action. Then, under DeLorme’s proposed interpretat ion of the Consent Order, if the patent expires while the enforc ement decision is on appeal, this court would be forced to vacate the enforcement decision. Under DeLo rme’s interpretation later expiration of the patent would erase an earlier violation and any civil penalty assessed for that violation. DeLorme would have no motivation to abide by the terms of the C onsent O rder and could violat e the order, and when the patent inevitably expired, DeLorme’s violation would need to be vacated . This is an absurd reading of the C onsent O rder.

DeLorme argues that its position is supported by the Commission Rules adopted after the Consent Order was entered in this case , which it purports now require co nsent order s to includ e statement s that they become “null

a nd void” if any claim of the patent expires or is held invalid or unenforceable “ in a final decision, no longer subject to appeal.” Appellants ’ Supp. Br. 6– 7 (quoting 19 C.F.R. § 210.21(c)(4) (eff. May 20, 2013) ) ; see also Consent Order at 1 (“DeLorme

. . . agrees to the entry of this Consent O rder and to all waivers and other provisions as required by Commission Rule of Practice and Proc edure 201.21(c)

. . . .”). This argument is unpersuasive. At the time of the C onsent O rder, Rule 210.21(c)(4) did not exist. The Commission Rules did not require inclusion of the statement s that now exist at Rule 210.21(c)(4). Thus,DELORME PUBLISHING C O ., INC

. v. ITC 12

th e statements set forth in this Rule were not incorp orated into the C onsent O rder. Moreover, we note that even if the statements had been incorporated, the Co nsent O rder becomes null and void only after a decision of invalidity that is “final” and “no longer subject to appeal.” 19 C.F.R. § 210.21(c)(4)(x). The enforcement decision was entered for this case before the Eastern District of Virgi nia ’s invalidity decision. And even now, the invalidity decision remains subject to appeal. Finally, we note that like the C onsent O rder, the Rule groups the invalidation trigger with expiration and unenforceability triggers

, which, as discussed above, cannot sensibly apply retroa ctively

. We thus reject DeLorme’s argument that the new Rules mandate reversal of the Commission’s enforcement decision or the accompanying penalty

. DeLorme also argues that the Commission is not a uthorized to enforce a Con sent O rder with regard to invalid patent claims . This argument is inapplicable to this case

. DeLorme’s acts, the Commission’s finding that those acts violated the C onsent O rder, and the Commission’s impos ition of a civil penalty all occurred before the s ummary judgment of invalidi ty . If that judgment becomes non

reviewable, the C onsent O rder will not apply prospectiv ely as to the invalid claims. B ut the Commission’s finding that DeLorme violated the C onsent O rder and the acco mpanying penalty for that vi olation will not be lifted. The Commission acted within the scope of its authority in enforcing the C onsent O rder. In its supplemental briefing and at argument, the Commission declined to take a position on the interpret ation of the C onsent O rder

. The Commission laid out a number of possible actions this court could take , including (1) remand to the Commission for a determination of the effect of the affirmance of invalidity, or (2) “not to remand at all, but to proceed to judgment in both appeals.” Ap pe llee’s Suppl. Br. 4. If the C onsent O rder were unclear as to the impact of the invalidation decision in this case , weDELORME PUBLISHING C O ., INC

. v. ITC 13

would remand. But the C onsent O rder unambiguously indicates that the invalidation trig ger— like the expir ation and unenforceability tri ggers

— appl ies only prospe ctively

. Neither the Commission nor DeLorme argue s that the C onsent O rder i s ambiguous

. There is no reason to remand this case because the C onsent O rder unambig uously answers the question at issue.

B. Our ePlus Decision
Finally, DeLorme argues that our recent decision in ePlus, Inc. v. Lawson Software, Inc.

, 789 F.3d 1349 (Fed. Cir. 2015) requires that the Commission’s civil penalty in this case be reversed. In ePlus , we (1) vacated an injun ction after the U.S. Patent and Trademark Office cancelled the only patent claim on which the injunction was based, id. at 1355

– 56, and (2) set aside the civil contempt san ction imposed for violation of the vacated injunction

, id. at 1361

. DeLorme’s argument that ePlus controls this case is incorrect

. ePlus held that a civil contempt sanction can be set aside whe n the underlying injunction

, upon which the sanction is based, is still itself non

- final or review able

. As we explained in ePlus, “The rule for civil contempt for violating a provision of an injunction that is not final, i.e., that is still subject to litigation over the propriety of its issuance, is that ‘[t]he right to remedial relief falls with an injunction which events prove wa s erroneously i ssued.’” 789 F.3d at 13 56 ( quoting United States v. United Mine Workers of Am. , 330 U.S. 258, 29 5 (1947) ). In eP lus

, we determined that the injunction was not final (it was still subject to appellate review) at the time we were reviewing t he civil contempt sanction and thus when the patent claims were cancelled

, both the injunction and civil contempt sanction had to be vacated. Id. at 1361. In this

case, in contrast, there is no question that the underlying C onsent O rder was final and not appealable. The Co nsent O rder itself states that “DeLorme shall be precludedDELORME PUBLISHING C O ., INC

. v. ITC 14

from seeking judicial review or otherwise challenging or contesting [its] validity.” Consent Order ¶ 2. Neither party has argued that the C onsent O rder in this case, like the injunction in ePlus

, was not final or appealable

. Therefore, we reject DeLorme’s argument that ePlus permits us to reject the civil penalty assessed in this case

. If the underlying order upon which a civil penalty or civil contempt sanction is based is final and no longer subject to appeal, the penalty or sanction cannot be vacated by subsequent events such as invalidation of the claims. Of course, if subsequent events warrant vacating the injun ction, such as invalidation of the patent claims, then the injunction is vacated prospectively. ePlus , 789 F.3d at 1356. But such prospective relief (vacating the injun ction) is not a basis for setting aside civil contempt san ctions. Likewise, t he C onsent O rder by its terms will no longer apply pros pectively once the invalidation is final and non -reviewable. G iven that the C onsent O rder itself is already final and unappealable , t his case is not go verned by ePlus

. 3 T he Consent Order was final and no longer subject to review at the time of the violat ion, thus we cannot set aside the penalty for that violation. This distinction is critical. 4 Finally, ePlus is inapplicable here because ePlus involved the Patent Office’s cancellation of claims, which voids claims “ab initio.” See , e.g. , Fresenius USA, Inc. v. Baxter Int’l, Inc. , 721 F.3d 1330, 1346 (Fed. Cir. 2013)

.

3 To the extent ePlus left open the question of whether civil contempt sanctions survive if the underlying injunction was final at the time the sanctions were i mposed, 789 F.3d at 1358, that question is hereby resolved.

4 W e note that the § 1337(f)( 2 ) “civi l penalty ” is p unitive and paid to the government and thus more like a criminal contempt sanction which cannot be set aside. We leave this issue to a future case where its resolution is briefed and necessary to the outcome.DELORME PUBLISHING C O ., INC

. v. ITC 15

C ONCLUSION Because the Commission did not err in finding that DeLorme violated the C onsent O rder or abuse its discr etion in imposing a civil penalty of $6,242,500, we affirm

. AFFIRMED

# United States **Court of Appeals**  **for the Federal Circuit**

______________________
DELORME PUBLISHING C OMPANY, INC., DELORME INREACH LLC, Appellants

v.

INTERNATIONAL TRADE COMMISSION, Appellee

______________________

2014

- 1572

______________________ Appeal from the United States International Trade Commission in Investigation No. 337

- TA

- 854.

______________________

T ARANTO , Circuit Judge , dissenting in part

. I join the majority’s deter mination that the Commi ssion committed no reversible error in entering its order imposing penalties on DeLorme for violation of the p atent

- infringement

- based Consent Order. Nevertheless, I dissent from the affirmance of th e penalty order

. After the penal ty order was entered, indeed after DeLorme filed its opening brief in this appeal challenging the order

, a district court held the relevant patent claims to be inv alid

, and today we affirm that invalidation in No. 2015

- 1169

. The Commission has not had an opportunity to consider the effect of the invalidation

. I would remand this matter to the Commission for it to consider the effectDELORME PUBLISHING CO ., INC

. v. ITC 2

of th e invalidation on enforcement of the civil penalty for

pre

- invalidation violations of the Con sent Order.

T he Commission has specifically argued to us that such a remand is “necessary”; it has not argued or conce ded that we may decide for ourselves whether the penalty should stand. ITC Supp. Br. 3, 8. To decide the issue ourselves at this stage

, I believe, we would have to co nclude that the answer is clear as a matter of law

— in particular, that (a) no possible factual findings or statut ory or regulatory interpretations within the Commission ’s authority could affect the answer and (b) all material considerations have been fully explored in briefing here. I am not prepared to draw those conclusions. I do not currently think that the answer is clear, and I believe that potentially material considerations have not been fully developed, having been ad dressed only in abbrevia ted letter briefs from the parties requested by this court shortly before the oral argument.
Preliminarily, I note that I do not believe it matters that the appeal in No. 2015

- 1169 might be reheard by this court or that our judgment in that appeal might be the subject of discretionary certiorari review in the Supreme Court. Those possibilities are slim, but even if they mean that the district court’s judgment of invalidation is not currently “final and non

- reviewable” under paragrap h 4 of the Consent Order, J.A. 1508, the present case is subject to the same possibilities of further review on the same timetables. The invalidation of the patent is highly likely to become final and non

- reviewable at such later stages of this case or on a remand to the Commission. That is reason enough for a remand to the Commission, which can take appropriate action on the remand if the invalid ation is set aside on further review in No. 2015

- 1169.

A I begin with the language of the C onsent O rder

, J. A. 1507

– 09 , which is quoted in the majority opinion. I do notDELORME PUBLISHING C O ., INC

. v. ITC 3

address what legal effect that language would have if it were unambiguous

. That language clearly contemplates that DeLorme could obtain a (final and non -reviewable) judgment of invalidity in district court. But I do not think that the language is unambiguous on the question before

us concerning the effect of such a judgment regarding earlier conduct . I find ambiguity for several reasons.
T wo features of the language of paragraph 1 offer support for the conclusion that the penalty for pre

invalidation conduct is meant to be enforceable under the C onsent O rder even after invalidation. One feature is the word “until.” The other is the listing of “expiration” alongside “invalidation” and “unenforceability”: a penalty for pre

- expiration infringing conduct almost certainly remains enforceable after expir ation

. Nevertheless, I do not think that the language does more than point in one direction; it does not unambig uously establish the answer. The “until” language does not imply a solely prospective effect of the event once it comes to pass. Linguistically, it allows the effect also to be retrospective, i.e. , to govern (non

- final, still reviewable) determinations about e arlier conduct. Cf. MedImmune, Inc. v. Genentech, Inc. , 549 U.S. 118, 124

– 25 (2007) (no ting that, under Lear, Inc. v. Adkins , 395 U.S. 653, 673 (1969), even when a patent license provided that a lice nsee was to pay royalties “until” a final judgment of in val idation, patent law precluded enforcement of that contractual commitment against a “repudiating” licensee). The inclusion of “expiration” alongside “invalidation” and “unenforceability” likewise does not resolve the interpretive issue. “ Expiration” h as an intrinsically different meaning from “invalidation” and “unenforceabi lity.” The former intrinsically indicates nothing to unde rmine the legal force of the patent

- compliance obligation before the event, whereas the latter two terms do precis ely that

— they imply that the legal obligation of patentDELORME PUBLISHING CO ., INC

. v. ITC 4

compliance was defective from day one . Serial enumer ation of terms with different intrinsic temporal meanings does not imply that all have the same temporal meaning.
Further, t here is an obvious absence of pa rallelism of the “expiration,” “invalidation,” and “unenforceability”
terms . The first two terms refer to events; the third refers to a condition, not an event

— specifically, not a judicial

pronouncement event. Moreover, with the third term of the series naming a condition that existed from the time of the patent’s issuance, its inclusion in the series raises the question whether the second term in the series might also have been meant to refer to a similar condition present from issuance, i.e. , invalidity. If the inclusion of “expiration” points in one direction for interpreting the effect of “invalidation,” the inclusion of “unenforceability” points the other way. I find significant not only the language t hat the Co nsent Order uses, but al so the language it does not use. Neither in paragraph 1 nor in paragraph 4 does t he C onsent O rder use language that is readily available and widely used in the realm of licensing in order to be clear about the compliance obligation’s coverage of pre

inval idation conduct. An e xample: “with respect to acts occurring thereafter

. ” Brian G. Brunsvold et al., Drafting Patent License Agreements 474 ( 6 th e d. 2008)

. 1 The best

1 Other examples of available language that is clearer than the Consent Order: “ will not, however, be relieved from paying any royalties that accrued before the final decision ,” Corporate Counsel’s Guide to Licensing § 36:2 (2015); “ shall not relieve either party of its oblig ations and liabilities accruing up to the time of termin ation ,” 3 Eckstrom’s Licensing in Foreign and Domestic Operations: The Forms and Substance of Licen sing § 5:35 (2015); “ shall not have a damage claim for refund or reimbursement .

. . for past royalty payments,” IconDELORME PUBLISHING C O ., INC

. v. ITC 5

reading of language used is often influenced by how it contrasts with language not used

. See

, e.g. , Roberts v. Sea

- Land Servs., Inc. , 132 S. Ct. 1350, 1357 n.5 (2012); New Process Steel, L.P. v. NLRB , 560 U.S. 674, 681

– 82 (2010); United States v. Ron Pair Enterprises, Inc. , 489 U.S. 235, 242 n.4 (1981)

. That interpretive principle

seems especially weighty where clarity is important, as it is with obligations enforced by penalties , since the choice not to use familiar language for imposing a particular obligation can often reasonably be understood to imply that that obligation is not being imposed.
It is a standard principle of contract interpretation that, where possible, provisions should be read in a way that harmonizes them. See Mastrobuono v. Shearson Lehman Hutton, Inc. , 514 U.S. 52, 63 (1995); Banknote Corp. of America, Inc. v. United States , 365 F.3d 1345, 1353 (Fed. Cir. 2004). Under that principle, paragraph 1 should be treated as a shorthand invocation of the same rule stated in paragraph 4 of the C onsent O rder

. As a

common- sense matter, it would be odd if the two par agraphs o f the Consent Order stat ed two different rules on the same topic. And that is so even putting aside the regulatory background, described below, which suggests that paragraph 4 may be the primary C onsent O rder provision on the topic.
But paragraph 4 is i tself unclear about the effect on

pre

- inva lidation conduct of a final judicial determination

Health & Fitness, Inc. v. Park City Ent m’ t, Inc. , No. 1:10

- CV

- 195

- RJS, 2013 WL 4027504, at *7 (D. Utah Aug. 7, 2013) ; “ shall pay to [patentee] a royalty of Three Percent (3%) of the Net Sales of all License d Products sold .

. . until the last date on which there is a Valid Claim ,” then defining “Valid Claim,” MedImmune, LLC v. PDL Bi oPharma, Inc. , No. C 08

- 5590 JF HRL, 2011 WL 61191, a t *21 (N.D. Cal. Jan. 7, 2011)

.DELORME PUBLISHING CO ., INC

. v. ITC 6

that the claims were, from the beginning, in valid. Par agraph 4 does not use the “until” language that is present in paragraph 1, suggesting that “until” not be gi ven great weight. And the language paragraph 4 does use is u nclear on the point at issue.
As relevant here, paragraph 4 says that “[t]he Co nsent Order shall not apply with respect to any [patent] claim

. . . that has

. . . been found or adjudicated inv alid

. . . by

. . . a court[,]

. . . provided that such finding or judgment has become final and non

- reviewable.” J.A. 1508. Th e “shall” in that language is at least as likely an imperative as it is a future

- tense word. Given the natural imperative meani ng, the language can easily be unde rstood to mean that prohibitions within the Consent Order do not apply, and cannot be treated as applying in making any determination requiring that they apply, to any claim that has been adjudicated to be invalid

, once t he invalidity adjudication is fi nal and non -reviewable . The language itself does not command a (prospective

- only) effect limited to post

- invalidation conduct regarding such a claim.
For those reasons, I think at present that the answer to the question before us cannot be determined without looking outside the four corners of the Consent Order.

B I do not feel adequately informed about a number of

non

- textual issues that could be material and might involve Commission interpretive, fact

- finding, or other d iscretion

. Such matters might affect the best interpret ation of the Consent Order or might lead to a result just ified independently of what is found to be the best interpretation.

We have not had a full exploration of how the Co mmission has treated such issues in the past

. Nor have we been shown h ow similar C onsent O rder s have been inte rpreted elsewhere, whether in agency or judicial settings.DELORME PUBLISHING C O ., INC

. v. ITC 7

Such practices could be significant background for dete rmining how best to interpret the C onsent O rder here.

Th e interpretation and application of a Consent Order general ly follow principles of contract law

. E.g.

, u PI Semiconductor Corp. v. Int’l Trade Comm’n , 767 F.3d 1372, 1377 ( Fed. Cir. 2014). C ontract interpretation is a matter of law as long as the court can conclude that the contract is unambiguous on the point at issue

, but if ambiguity exists, the question in many contract settings can become a factual one, or involve factual components, whether about the parties’ subjective intent or about a
usage, pra ctice, or method in the field. See Teva Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 837

– 38 (2015) (discussing Williston); Restatement (Second) of Contracts § 212(2) (1981); Farnsworth on Contracts § 7.14 at 336

– 37 (3d ed. 2004) ; Warner, All Mixed Up About Contract: When Is Contract Interpretation a Legal Question and When Is It a Fact Question , 5 Va. L. & Bus. Rev. 81 (2010). I cannot at present exclude the possibility that Commission finding s of fact could matter here.
Moreover, an enforceable consent order, even a judicial consent decree, is not always to be treated under the same principles that govern an ordinary contract. See Foster v. Hallco Mfg. Co., Inc. , 947 F.2d 469 (Fed. Cir. 1991) (hol ding that the Lear v. Adkins ruling, which overrides certain contractual promises, does not override the claim

preclusive effect of a consent decree). Perhaps, in the present setting, there is reason not to find a contractual approach controlling. For now I focus on one such poss ible reason: the C onsen t O rder is an order backed by (non

compensatory) penalties.

The First Circuit has written: “Consent decrees have to be specific and any ambiguities or omissions in the decree are construed against the person alleging a viol ation of the consent decree and invoking the contempt sanction.” Porrata v. Gonzalez

- Rivera , 958 F.2d 6, 8 ( 1stDELORME PUBLISHING CO ., INC

. v. ITC 8

Cir. 1992); see FTC v. Kaykendall , 371 F.3d 745, 760

– 61 ( 10th Cir. 2004). In this court’s decision in TiVo Inc. v. EchoStar Corp.

, 646 F.3d 869 (Fed. Cir. 2 011) (en banc),
t he five

- judge dissent cited Porrata for the proposition that an order must be “clear and unambiguous” to be enforced in contempt, 646 F.3d at 899 n.7, and the major ity did not disagree in principle, instead concluding that the dissent’s point was not “persuasive on the facts before us,” id. at 887

– 88. Under such principles, ambiguity in the C onsent O rder in the present case

— regarding the effect of invalidation once i nvalidation becomes final

— might be enough to bar enforcement. That principle seems particularly weighty where, as here, it appears to be easy for a Consent Order to be clear on the point at issue , as discussed above.
For penalties for a Consent Order viol ation, t he anti

ambiguity principle might trump any conclusion to be drawn from the contra proferentem principle of contract interpretation

— favoring construction against the drafter

. See Mastrobuono , 514 U.S. at 62

– 63

. E ven th at principle, however, is not of clear

- cut application here on its own
terms. On one hand, it appears that DeLorme initially drafted the Consent Order. On the other hand, DeLorme did so against a strong regulatory background that might be viewed as effectively having controlled wha t the C o nsent O rder should say. The former point suggests co nstruction against DeLorme, the latter suggests the opposite to the extent that the Commission ’s regulations effect ively ma de the Commission the drafter.
The regulatory background is significant for that re ason and independently as an interpretive tool. 2 The

2 See

, e.g. , United States v. ITT Continental Baking Co. , 420 U.S. 223, 240 (1975) (relying on the antitrust statutes to interpret terms in the consent order); United States v. Bradley , 484 F. App’x 368, 374 (11th Cir. 2012 )DELORME PUBLISHING C O ., INC

. v. ITC 9

C onsent O rder was issued on April 5, 2013, J.A. 1507

– 09, based on a “consent order stipulation” submitted by DeLorme in early March 2013, J.A. 1495

– 97. At that time, the governing regulation specified what the “consent order stipulation shall” contain, including a statement that the C onsent O rder “shall not apply with respect to any claim

. . . that has expired or been found or adjudica ted invalid or unenforceable,” “provided that such findin g or judgment has become final and nonreviewable.” 19 C.F.R. § 210.21(c)(3)(i)(B)(1) (2012) (emphasis added)

, currently codified at id. § 210.21(c)(3)(ii)(A). The required language appears in p aragraph 6 of the March 2013 C onsent O rder Stipulation in thi s case

. J.A. 1497 . D eLorme also included it in paragraph 4 of the proposed C onsent O rder

. J.A. 1508.

DeLorme included the language in the proposed Co nsent Order even though, w hen the Consent Order in this

case was proposed (and adopted ) , the Commission’ s regulations did not specify what a c onsent o rder itself

(rejecting interpretation of consent order that would require forfeiture given background principles that disfavor forfeiture); Doe v. Briley , 511 F. Supp. 2d 904, 918 (M.D. Tenn. 2007), aff’d , 562 F.3d 777 (6th Cir. 2009) (using a change in the city cod e to interpret a consent order); Henderson v. Morrone , 214 F. App’x 209, 213 (3d Cir. 2007) (construing consent order in light of differences between terms of the consent order and later

- adopted regulations); United States v. Saccoccia , 433 F.3d 19, 29 (1s t Cir. 2005) (finding ambiguity in consent order based on background forfeiture laws); McDowell v. Phila

. Hous. Auth ., 423 F.3d 233, 239

– 40 (3d Cir. 2005) (interpreting consent order in light of housing regulations); United States v. Charter Int’l Oil Co.

, 83 F.3d 510, 517

– 18 (1st Cir. 1996) (defining scope of consent order by looking to background law).DELORME PUBLISHING CO ., INC

. v. ITC 10

must say . But it is evident that this language origin ated from the language in the Commission’s requirement for what the required stipulation must say . Moreover, at the time of the proposal and adoption of the Consent Order, the Commission had already proposed regulations to add just such a requirement for the content of consent orders, mirroring the pre

- existing requirement for consent

- order stipulations. 77 Fed. Reg. 41,120, 41,12 3, 41,128

– 29 (July 12, 2012). On April 19, 2013, two weeks after the Consent Order in this case was issued, the Commission adopted its regulatory proposal , making it effective May 20, 2013

. The adopted language, now in 19 C.F.R. § 210.21(c)(4)(x), requir es a C onsent O rder to state that if a patent claim “is held invalid,” “the Consent Order shall become null and void as to such invalid

. . . claim.” See 78 Fed. Reg. 23,474, 23,477, 23,483 (Apr. 19, 2013). This effectively puts the pre

- existing requireme nt for a c onsent o rder

s tipulation into a new list of requirements for the assoc iated c onsent o rder

. And the new regulation (like the proposal) says: “The Commission will not enforce consent order terms beyond those provided for in this section.” 19 C.F. R. § 210.21(c)(5); 77 Fed. Reg. at 41,129 (propos ed rule ).

I am not prepared to draw conclusions at this point about the significance of this regulatory background. Perhaps the regulatory amendments adopted on April 19, 2013 (to take effect one month late r) should be read to confirm, by making express, a pre

- existing understanding that the requirements for a consent -o rder stipulation effectively controlled the c onsent o rder itself . Perhaps for that reason the C onsent O rder here should or must be read to go no further than the pre

- May 2013 prescription for con sent -o rder stipulation s . I would benefit from the Commission’s analysis of such matters . And the public might benefit if, in the course of considering them, the Commission decided to clarify its reg ula tions to avoid recurrence of the problem presented here.DELORME PUBLISHING C O ., INC

. v. ITC 11

The statutory provisions under which the C onsent O rder was issued and is being enforced, 19 U.S.C. § 1337(f), may also be significant here. In San Huan New Materials High Tech, Inc. v. Int ernatio na l Trade Comm i ssio n , 161 F.3d 1347 (Fed. Cir. 1998), this court a ffirmed the Commission’s ruling that a consent order was to be enforced like an involuntary order, through penalties under § 1337(f)(2). But § 1337(f)(2) may be confined within the limits s tated in § 1337(f)(1), which, by its language, may reach no further than conduct that const itutes a violation of § 1337(a) , which, in turn, for a patent

based proceeding like this one, requires that the respon dent “infringe a valid ” patent , § 1337(a)(1)(B)(i) (e mphasis added)

. I n that way or others, th e statut e governing this matter may limit how the C onsent O rder can be enforced once there is a final judgment of invalidity. I would benefit from more focused development of this issue than we have had, especially because the issue might be one on which the Commission will ultimately be owed deference.
Finally, it s eems relevant to consider how the penalty order for violating the Consent Order compares to co ntempt orders issued by federal court s for violating orders (even consensual orders) against patent infringement and, specifically, how such contempt orders are t reated once the patent is adjudicated (always to have been) invalid. How contempt orders are treated depends on the finality of the underlying infringement

- barring order and the character of the contempt

— in particular, whether the contempt is criminal or civil. See ePlus, Inc. v. Lawson Software, Inc.

, 789 F.3d 1349

, 1356

– 58
, reh ’ g denied , 790 F.3d 1307 (Fed. Cir. 2015) . If we ask the question whet her the Commission’s civil penalty here is more like civil or criminal contempt in the federal courts, we fi nd at least

some reason to view it as more like criminal contempt

, because there is nothing either compensatory or specifically coercive (pay until you comply) about it. But even asDELORME PUBLISHING CO ., INC

. v. ITC 12

to that, I would benefit from the Commission’s own full consideration of its statutory and regulatory regime. For the foregoing reasons, I would not affirm the pe nalty order before us, but remand for the Commission to consider the effect of the invalidation of the underlying patent claims

.