In a recent Order, the Commission held that an earlier-entered Consent Order should be vacated in view of a settlement agreement between the parties but that the Commission did not have the authority to vacate a civil penalty for violation of the Consent Order.


On September 6, 2011, the Commission instituted Investigation No. 337-TA-698 (Enforcement Proceeding) based on an enforcement complaint filed by Richtek for alleged violations of an August 13, 2010 Consent Order issued in the underlying investigation.  In particular, Richtek alleged that uPI Semiconductor Corp. and others were violating the Consent Order by continuing to import, offering for sale, selling, or selling for importation certain DC-DC controllers or products containing the same.

At the conclusion of the proceeding, the Commission found that uPI violated the Consent Order and imposed a $620,000 civil penalty on uPI for 62 days of violations.  Both parties appealed to the Federal Circuit, which disagreed with certain of the Commission’s conclusions and remanded the case back to the ITC for further proceedings.  In view of the Federal Circuit’s decision, the Commission issued a Modified Civil Penalty Order adjusting the amount of the civil penalty to $650,000.

On November 29, 2016, Richtek and uPI jointly filed a petition to rescind the Commission’s Consent Order and Civil Penalty Order under Commission Rule 210.76(a)(1) based on a November 18, 2016 settlement agreement.  Ultimately, the Commission agreed with the parties that it was appropriate to vacate the Consent Order under Commission Rule 210.76(a)(1).  With respect to the rescission of the civil penalty, the Commission concluded that the “petitioners bear the burden of demonstrating (i) that the Commission has the authority to vacate the civil penalty under the present circumstances, and that, (ii) the Commission should exercise that authority in the present case.”  In this case, the Commission indicated that the parties failed to meet their burden with respect to both conditions so uPI remained obligated to pay the civil penalty.

In reaching this conclusion, the Commission distinguished this case from earlier proceedings where the Commission dismissed Orders Imposing Civil Penalties, because in the earlier cases, the parties settled their dispute while appeals from a Commission determination were still pending, as opposed to after appeals had been exhausted.


Litigants at the ITC should be mindful that Commission Rule 210.76(a)(1) does not require the Commission to vacate a civil penalty order and that the petitioner bears the burden of demonstrating that the Commission should exercise its authority to vacate such an order in the particular case.  In addition, litigants should be aware that the Commission may not vacate a civil penalty unless an appeal is still pending

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.