ITC Determination of Invalidity Does Not Relieve Obligations Under Earlier Settlement and Consent Decree Admitting Validity of Patent

Defendant's motion for satisfaction or modification of a consent judgment following the ITC's determination that the patent-in-suit was invalid was denied. The parties' earlier settlement agreement contained an admission by defendant that the patent was valid, but relieved defendant of royalty obligations if "a judgment is entered that the [patent-in-suit] is invalid or unenforceable by a United States Court." The court rejected defendant's argument that the Federal Circuit's affirmance of the ITC's determination of invalidity relieved defendant of royalty obligations. "[T]he court need not reach the issues regarding whether the ITC's determination of the [patent-in-suit] has preclusive effect. . . . [Defendant] is barred from challenging the validity of the patent in question by the exact terms in the consent decree and its Settlement Agreement where [defendant] admitted that the patent in question was valid and it agreed it would not challenge the validity of the patent. . . . [T]he court views the current motion [pursuant to] Rule 60(b) as an improper attempt to attack the validity of the patent in question via the back door, which is barred by the terms of both the consent decree and the Settlement Agreement."

Tillotson Corp. v. The Safety Zone, 4-06-cv-00242 (GAND June 4, 2010, Order) (Vining, J.)