YARMOUTH, Maine — The mapping and GPS company DeLorme, based here, faces a $6.2 million fine for patent infringement on a satellite communicator.
Last week, the U.S. Court of Appeals upheld a decision by the International Trade Commission to penalize the company for violating an agreement regarding the alleged patent infringement. But the court also issued a decision on a separate case that found the patent in question was invalid.
An attorney for DeLorme contends that the two decisions are in conflict with each other.
DeLorme is probably best known in Maine for making trusty atlases and gazetteers. But at the heart of the patent infringement case is a different product altogether: a two-way satellite communicator.
DeLorme calls it the inReach. It's a safety device for use in remote locations.
"I go places that require a Super Cub. A float plane. Or days by horseback," says Steve West of the Outdoor Channel show Steve's Outdoor Adventures in a promotional video. "And the DeLorme inReach is my only form of communication. Stay safe. Stay in touch. And stay in reach."
While DeLorme has the inReach, another company called BriarTek, based out of Virginia, has a satellite communicator called the Cerberlink. BriarTek's attorney John Fuisz says BriarTek developed Cerberlink first.
"Rather than DeLorme doing business with BriarTek, DeLorme decided to go and make their own product overseas in Taiwan and undercut BriarTek in the marketplace," he says.
So in 2012, Briartek filed a complaint with the International Trade Commission for patent infringement. In response, DeLorme moved manufacturing of inReach to its headquarters in Yarmouth, and it agreed it would not sell imported two-way satellite communication devices, systems or components that infringed on the patent.
But Fuisz says DeLorme violated the agreement because it made the inReach using imported parts.
"And then said it was made in the United States," he says. "That didn't solve the fact this product originally came into the U.S. from overseas."
The International Trade Commission slapped DeLorme with a $6.2 million fine, which the U.S. Court of Appeals upheld in a decision last week. But on the same day, the same court ruled in another case that BriarTek's patent itself was invalid.
"That makes absolutely no sense," says Peter Brann, a Lewiston-based attorney representing DeLorme. "This is an agency that's supposed to be protecting domestic industry, not ruining it.
"The whole point is the patent is not valid, so there's no prospect of the ITC sticking their nose back in on this one," he says.
BriarTek's attorney says DeLorme is still accountable for the agreement it entered.
Both sides say they are considering next steps, which could include petitions for a rehearing or to take the case to the U.S. Supreme Court.
DeLorme's CEO was unavailable for comment on this story. The company employs about 100 people.
