United States Court of Appeals 

for the Federal Circuit ______________________ 

DELORME PUBLISHING COMPANY, 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 12, 2015

______________________ 

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. 

______________________ 

Before MOORE, REYNA, and TARANTO, Circuit Judges. 
2 DELORME PUBLISHING CO., INC. v. ITC

Opinion for the court filed by Circuit Judge MOORE. 

Opinion dissenting-in-part filed by Circuit Judge

TARANTO. 

MOORE, Circuit Judge. 

DeLorme Publishing Company, Inc. and DeLorme 

InReach LLC (collectively, “DeLorme”) appeal from a 

decision by the International Trade Commission (“Commission”) (1) finding that DeLorme violated a consent 

order by selling InReach 1.5 and SE devices containing 

imported components, and (2) imposing a civil penalty of 

$6,242,500. Certain Two-Way Global Satellite Communication 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. 

BACKGROUND

In September 2012, the Commission instituted an investigation to determine if DeLorme was violating section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 

§ 1337, by importing, selling for importation, or selling 

after importation “certain two-way global satellite communication devices, system and components thereof” that 

allegedly infringed claims 1, 2, 5, 10–12, and 34 of BriarTek IP, Inc.’s U.S. Patent No. 7,991,380. Certain TwoWay 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 user unit and a monitoring system that communicate through a satellite network. 

The accused products included DeLorme’s InReach 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 investigation based on entry of a consent order proposed by 

DeLorme. Certain Two-Way Global Satellite Communica-
DELORME PUBLISHING CO., 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, 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 importation any two-way global satellite communication 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 expiration, invalidation, and/or unenforceability of the 

’380 Patent. 

Certain Two-Way Global Satellite Communication Devices, System and Components Thereof, Inv. No. 337-TA-854, 

Consent Order ¶ 1 (April 5, 2013) (J.A. 1507–09) (“Consent Order”). 

On May 24, 2013, the Commission instituted an enforcement proceeding based on BriarTek’s allegations that 

DeLorme violated the Consent Order by, inter alia, selling 

InReach 1.5 and SE devices containing imported components. 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 Commission issued a decision in the enforcement proceeding

(1) finding that DeLorme violated the Consent Order, 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).

DISCUSSION

We review the Commission’s legal determinations in 

an enforcement proceeding without deference and its 
4 DELORME PUBLISHING CO., INC. v. ITC

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 supported by the record as whole, even if some evidence 

detracts from the Commission’s conclusion.” Id. Consent 

orders are interpreted as contracts. Id. Contract interpretation is a question of law. Id. We review interpretation 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 based 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 Commission’s imposition of a civil penalty under 19 U.S.C. 

§ 1337(f)(2) for abuse of discretion. Ninestar Tech. Co. v. 

Int’l Trade Comm’n, 667 F.3d 1373, 1380 (Fed. Cir. 2012).

I.

The Commission determined that DeLorme violated 

the Consent Order 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 the order, it imports, sells for importation, 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 induced 

infringement and violated the Consent Order 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 it concluded that DeLorme also induced 

infringement by activating previously sold InReach devic-
DELORME PUBLISHING CO., INC. v. ITC 5

es, such infringement “did not equate to” a violation of the 

Consent Order. Id. at 24–25.

DeLorme argues that even if the devices infringed the 

claims, the Consent Order did not preclude DeLorme from 

selling domestically manufactured devices containing

imported, noninfringing components. It argues that the 

terms of the Consent Order instead prohibited DeLorme 

from using imported components only if the components 

themselves infringed. It argues that the Commission 

“rewrote” the Consent Order 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 Consent 

Order 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 Consent Order 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 Consent Order 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, that 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 components with instructions to infringe. 

DeLorme’s remaining arguments against the Commission’s finding that it violated the Consent Order are 

unpersuasive. For example, the claims are not limited as 

proposed by DeLorme, and substantial evidence supports 

the Commission’s finding of infringement. Under the 

Supreme Court’s recent decision in Commil USA, LLC v. 

Cisco Systems, 135 S. Ct. 1920, 1928 (2015), a good-faith 

belief in the patent’s invalidity was not a defense to 

induced infringement. Thus, the Commission did not err 
6 DELORME PUBLISHING CO., INC. v. ITC

in its conclusion that DeLorme violated the Consent 

Order.

II.

The Commission imposed a civil penalty under 19 

U.S.C. § 1337(f)(2) of $27,500 per day for 227 violation

days, for a total of $6,242,500. Section 1337(f)(2) provides:

Any person who violates an order issued by the 

Commission under paragraph (1) after it has become 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 violation of the order of not more than the greater of 

$100,000 or twice the domestic value of the articles 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 Columbia 

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 Commission has the authority to issue § 1337(f)(2) civil penalties 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 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. Comm’n Op. at 

27, 42–50 (citing, e.g., Certain Erasable Programmable 

Read Only Memories (EPROMs), Inv. No. 337-TA-276

(Enforcement), Comm’n Opinion (July 19, 1991)); see also
DELORME PUBLISHING CO., 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 statutory 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 InReach 

devices bring to DeLorme” and consistent with the Commission’s policy of deterring future violations while not 

driving DeLorme out of business. Comm’n Op. at 50

(citing, e.g., San Huan, 161 F.3d at 1364).

DeLorme argues that the Commission abused its discretion by imposing a “grossly excessive” civil penalty. 

Appellants’ Br. 55. It argues that the penalty was not 

“proportionate” under the EPROM factors analysis. Id.

(citing San Huan, 161 F.3d at 1362). For example, it 

argues that the Commission incorrectly determined that 

DeLorme acted in bad faith. It also argues that in assessing the benefit of the violative sales to DeLorme, the 

Commission should have looked to the imported components’ value rather than that of the devices as a whole. 

The Commission did not abuse its discretion in imposing 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 error in its fact findings or error in its application of the law. DeLorme has not shown, for example,

that there was clear error in the Commission’s findings 

regarding DeLorme’s bad faith or that the violative sales 

greatly benefited DeLorme. We conclude that the Commission did not abuse its discretion in its penalty determination.
8 DELORME PUBLISHING CO., INC. v. ITC

III.

A. Interpreting the Consent Order

After the Commission issued the decision on appeal in 

this case, the Eastern District of Virginia granted summary judgment that claims 1, 2, 5, 10–12, 34, and 35 of 

the ’380 patent are invalid for anticipation and obviousness. 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 Consent Order or 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 induce . . . infringement [of claims 1 and 2] now, nor be 

liable for having induced their infringement in the past.” 

Appellants’ Supp. Br. 3.

The relevant parts of the Consent Order are as follows: 

1. Upon 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 importation any two-way global satellite communication 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 expira1 BriarTek appealed the Eastern District of Virginia’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 CO., INC. v. ITC 9

tion, invalidation, and/or unenforceability of the 

’380 Patent.

2. DeLorme shall be precluded from seeking judicial review 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 Consent Order is a question of 

law. The Consent Order 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 unambiguously resolves the question of the impact of an invalidity 

decision on the enforcement of the Consent Order. The 

Consent Order bars certain sales and importations “until” 

one of three events occurs: “expiration, invalidation, 

and/or unenforceability of the ’380 Patent.” Consent 

Order ¶ 1. Additionally, it explains that the Consent 

Order ceases to apply when the patent claim at issue has 

“expired or been found or adjudicated invalid or unenforceable . . . 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 De-
10 DELORME PUBLISHING CO., INC. v. ITC

Lorme will no longer be constrained by its terms. Until 

one of these events occurs, however, the Consent Order is 

binding upon DeLorme.

In this case, the Consent Order applied to DeLorme at 

the time 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 argues in its supplemental briefing that the 

subsequent district court invalidation of the claims retroactively 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 triggering 

events to apply retroactively. Indeed, DeLorme argues 

with respect to paragraph 1 that invalidation “would end” 

its obligations—an argument that is forward-looking. 

Appellants’ Suppl. Br. 5.

Paragraph 4 similarly provides that the Consent Order “shall not apply” with respect to any claim that 

“has . . . been” invalidated. Consent Order ¶ 4. Particularly when read in the context of the Consent Order as a 

whole, this provision is forward-looking and contains no 

language indicating that the invalidation trigger would 

apply retroactively. DeLorme’s argument regarding 

paragraph 4—that the Commission would “no longer” 

retain jurisdiction over invalidated claims—is also forward-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 CO., 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, then expiration of the claims would do the same. 

Under such a reading of the Consent Order, the Commission could determine that DeLorme violated the Consent 

Order and award a civil penalty in an enforcement action. 

Then, under DeLorme’s proposed interpretation of the 

Consent Order, if the patent expires while the enforcement decision is on appeal, this court would be forced to 

vacate the enforcement decision. Under DeLorme’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 Consent Order and could violate the 

order, and when the patent inevitably expired, DeLorme’s 

violation would need to be vacated. This is an absurd 

reading of the Consent Order.

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 consent orders to include statements that they become “null 

and 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 Order and to all waivers and other provisions as 

required by Commission Rule of Practice and Procedure 201.21(c) . . . .”). This argument is unpersuasive. At 

the time of the Consent Order, Rule 210.21(c)(4) did not 

exist. The Commission Rules did not require inclusion of 

the statements that now exist at Rule 210.21(c)(4). Thus, 
12 DELORME PUBLISHING CO., INC. v. ITC

the statements set forth in this Rule were not incorporated into the Consent Order. Moreover, we note that 

even if the statements had been incorporated, the Consent Order 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 Virginia’s invalidity decision. And even now, the invalidity 

decision remains subject to appeal. Finally, we note that 

like the Consent Order, the Rule groups the invalidation 

trigger with expiration and unenforceability triggers, 

which, as discussed above, cannot sensibly apply retroactively. 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 authorized to enforce a Consent Order 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 Consent Order, and the Commission’s imposition of a civil penalty all occurred before the summary 

judgment of invalidity. If that judgment becomes nonreviewable, the Consent Order will not apply prospectively as to the invalid claims. But the Commission’s finding 

that DeLorme violated the Consent Order and the accompanying penalty for that violation will not be lifted. The 

Commission acted within the scope of its authority in 

enforcing the Consent Order.

In its supplemental briefing and at argument, the 

Commission declined to take a position on the interpretation of the Consent Order. 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.” Appellee’s Suppl. Br. 4. If the Consent Order were unclear as to 

the impact of the invalidation decision in this case, we 
DELORME PUBLISHING CO., INC. v. ITC 13

would remand. But the Consent Order unambiguously 

indicates that the invalidation trigger—like the expiration and unenforceability triggers—applies only prospectively. Neither the Commission nor DeLorme argues that 

the Consent Order is ambiguous. There is no reason to 

remand this case because the Consent Order unambiguously 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 injunction 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 sanction 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 when the underlying injunction, upon which the 

sanction is based, is still itself non-final or reviewable. 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 was erroneously issued.’” 789 F.3d at 1356 (quoting United States v. United 

Mine Workers of Am., 330 U.S. 258, 295 (1947)). In ePlus,

we determined that the injunction was not final (it was 

still subject to appellate review) at the time we were 

reviewing the 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 

Consent Order was final and not appealable. The Consent Order itself states that “DeLorme shall be precluded 
14 DELORME PUBLISHING CO., INC. v. ITC

from seeking judicial review or otherwise challenging or 

contesting [its] validity.” Consent Order ¶ 2. Neither 

party has argued that the Consent Order 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 injunction, 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 injunction) is not a basis for setting aside civil contempt sanctions. Likewise, the Consent Order by its terms will no 

longer apply prospectively once the invalidation is final 

and non-reviewable. Given that the Consent Order itself 

is already final and unappealable, this case is not governed by ePlus.3 The Consent Order was final and no 

longer subject to review at the time of the violation, 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 imposed, 789 F.3d at 1358, that question is hereby resolved.

4 We note that the § 1337(f)(2) “civil penalty” is punitive 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 CO., INC. v. ITC 15

CONCLUSION

Because the Commission did not err in finding that 

DeLorme violated the Consent Order or abuse its discretion in imposing a civil penalty of $6,242,500, we affirm. 

AFFIRMED
United States Court of Appeals 

for the Federal Circuit ______________________ 

DELORME PUBLISHING COMPANY, 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.

______________________ 

TARANTO, Circuit Judge, dissenting in part. 

I join the majority’s determination that the Commission committed no reversible error in entering its order 

imposing penalties on DeLorme for violation of the patent-infringement-based Consent Order. Nevertheless, I 

dissent from the affirmance of the penalty order. After 

the penalty 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 invalid, 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 effect 
2 DELORME PUBLISHING CO., INC. v. ITC

of the invalidation on enforcement of the civil penalty for 

pre-invalidation violations of the Consent Order.

The Commission has specifically argued to us that 

such a remand is “necessary”; it has not argued or conceded 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 conclude that the answer is clear as a matter of law—in 

particular, that (a) no possible factual findings or statutory 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 addressed only in abbreviated 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 paragraph 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 invalidation is set aside on further review in No. 2015-1169. 

A 

I begin with the language of the Consent Order, J.A. 

1507–09, which is quoted in the majority opinion. I do not 
DELORME PUBLISHING CO., 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.

Two features of the language of paragraph 1 offer 

support for the conclusion that the penalty for preinvalidation conduct is meant to be enforceable under the 

Consent Order 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 expiration. 

Nevertheless, I do not think that the language does 

more than point in one direction; it does not unambiguously 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 earlier conduct. Cf. MedImmune, 

Inc. v. Genentech, Inc., 549 U.S. 118, 124–25 (2007) (noting that, under Lear, Inc. v. Adkins, 395 U.S. 653, 673 

(1969), even when a patent license provided that a licensee was to pay royalties “until” a final judgment of invalidation, 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” has an intrinsically 

different meaning from “invalidation” and “unenforceability.” The former intrinsically indicates nothing to undermine the legal force of the patent-compliance obligation 

before the event, whereas the latter two terms do precisely that—they imply that the legal obligation of patent 
4 DELORME PUBLISHING CO., INC. v. ITC

compliance was defective from day one. Serial enumeration of terms with different intrinsic temporal meanings 

does not imply that all have the same temporal meaning.

Further, there is an obvious absence of parallelism 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 judicialpronouncement 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 that the Consent Order uses, but also the language it does not use. 

Neither in paragraph 1 nor in paragraph 4 does the 

Consent Order 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 preinvalidation conduct. An example: “with respect to acts 

occurring thereafter.” Brian G. Brunsvold et al., Drafting 

Patent License Agreements 474 (6th ed. 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 obligations and liabilities accruing up to the time of termination,” 3 Eckstrom’s Licensing in Foreign and Domestic 

Operations: The Forms and Substance of Licensing § 5:35

(2015); “shall not have a damage claim for refund or 

reimbursement . . . for past royalty payments,” Icon 

 
DELORME PUBLISHING CO., 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 Consent Order. As a 

common-sense matter, it would be odd if the two paragraphs of the Consent Order stated 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 Consent Order

provision on the topic. 

But paragraph 4 is itself unclear about the effect on 

pre-invalidation conduct of a final judicial determination 

Health & Fitness, Inc. v. Park City Entm’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 Licensed Products sold . . . 

until the last date on which there is a Valid Claim,” then 

defining “Valid Claim,” MedImmune, LLC v. PDL BioPharma, Inc., No. C 08-5590 JF HRL, 2011 WL 61191, at 

*21 (N.D. Cal. Jan. 7, 2011). 

 
6 DELORME PUBLISHING CO., INC. v. ITC

that the claims were, from the beginning, invalid. Paragraph 4 does not use the “until” language that is present 

in paragraph 1, suggesting that “until” not be given great 

weight. And the language paragraph 4 does use is unclear on the point at issue. 

As relevant here, paragraph 4 says that “[t]he Consent Order shall not apply with respect to any [patent] 

claim . . . that has . . . been found or adjudicated invalid . . . by . . . a court[,] . . . provided that such finding or 

judgment has become final and non-reviewable.” J.A. 

1508. The “shall” in that language is at least as likely an 

imperative as it is a future-tense word. Given the natural 

imperative meaning, the language can easily be understood 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 the invalidity adjudication is final 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 

discretion. Such matters might affect the best interpretation of the Consent Order or might lead to a result justified independently of what is found to be the best 

interpretation. 

We have not had a full exploration of how the Commission has treated such issues in the past. Nor have we 

been shown how similar Consent Orders have been interpreted elsewhere, whether in agency or judicial settings. 
DELORME PUBLISHING CO., INC. v. ITC 7

Such practices could be significant background for determining how best to interpret the Consent Order here. 

The interpretation and application of a Consent Order

generally follow principles of contract law. E.g., uPI 

Semiconductor Corp. v. Int’l Trade Comm’n, 767 F.3d 

1372, 1377 (Fed. Cir. 2014). Contract 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, practice, 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 findings 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) (holding that the Lear v. Adkins ruling, which overrides certain 

contractual promises, does not override the claimpreclusive 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 possible reason: the Consent Order is an order backed by (noncompensatory) 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 violation of the consent decree and invoking the contempt 

sanction.” Porrata v. Gonzalez-Rivera, 958 F.2d 6, 8 (1st 
8 DELORME PUBLISHING CO., INC. v. ITC

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. 2011) (en banc), 

the 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 majority 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 Consent Order in the present case—regarding the 

effect of invalidation once invalidation 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 violation, the antiambiguity 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. Even that 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 what the Consent Order should say. The former point suggests construction against DeLorme, the latter suggests the 

opposite to the extent that the Commission’s regulations 

effectively made the Commission the drafter.

The regulatory background is significant for that reason 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 CO., INC. v. ITC 9

Consent Order 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 Consent Order “shall not apply with respect to 

any claim . . . that has expired or been found or adjudicated invalid or unenforceable,” “provided that such finding 

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 paragraph 6 of the March 2013 

Consent Order Stipulation in this case. J.A. 1497. DeLorme also included it in paragraph 4 of the proposed 

Consent Order. J.A. 1508.

DeLorme included the language in the proposed Consent Order even though, when the Consent Order in this 

case was proposed (and adopted), the Commission’s 

regulations did not specify what a consent order 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 code 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 

(1st 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).

 
10 DELORME PUBLISHING CO., INC. v. ITC

must say. But it is evident that this language originated 

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, 41,123, 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), 

requires a Consent Order 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 requirement for a consent order

stipulation into a new list of requirements for the associated consent order. 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 (proposed 

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 later) should be read to 

confirm, by making express, a pre-existing understanding 

that the requirements for a consent-order stipulation 

effectively controlled the consent order itself. Perhaps for 

that reason the Consent Order here should or must be 

read to go no further than the pre-May 2013 prescription 

for consent-order stipulations. 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 regulations to avoid 

recurrence of the problem presented here.
DELORME PUBLISHING CO., INC. v. ITC 11

The statutory provisions under which the Consent 

Order 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. International Trade Commission, 161 F.3d 1347 (Fed. Cir. 1998), this court affirmed 

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 stated in § 1337(f)(1), which, by its 

language, may reach no further than conduct that constitutes a violation of § 1337(a), which, in turn, for a patentbased proceeding like this one, requires that the respondent “infringe a valid” patent, § 1337(a)(1)(B)(i) (emphasis 

added). In that way or others, the statute governing this 

matter may limit how the Consent Order 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 seems relevant to consider how the penalty 

order for violating the Consent Order compares to contempt orders issued by federal courts for violating orders 

(even consensual orders) against patent infringement and, 

specifically, how such contempt orders are treated 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 whether the Commission’s civil penalty here is more like civil or 

criminal contempt in the federal courts, we find 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 as 
12 DELORME PUBLISHING CO., INC. v. ITC

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 penalty order before us, but remand for the Commission to 

consider the effect of the invalidation of the underlying 

patent claims.