Certain Digital Set Top Boxes And Components Thereof, Inv. No. 337-TA-712, presents some interesting procedural issues involving claim construction raised in a motion for summary determination where:
- the Administrative Law Judge ("ALJ") had previously required the parties to identify disputed claim terms and their respective proposed constructions, and invited the parties to submit comments on the appropriateness of a Markman hearing and a pre-trial construction of the claims;
- the ALJ had declined to hold a pre-trial Markman hearing, apparently because no party had requested such a hearing; and
- the Respondent's motion for summary determination relied upon a claim construction that was not an agreed upon claim construction.
The ALJ (Judge Gildea) denied the motion for summary determination of non-infringement on multiple grounds. Significantly, the ALJ held that without a stipulated, agreed upon construction of the claim terms at issue in the motion, the motion fails to show that the movant was entitled to summary determination as a matter of law. While this statement appears to set forth an extremely difficult standard to meet, the procedural history of the case reveals that the interplay of the ALJ's rules on Markman hearings and deadlines for proposing claim constructions provide opportunities to obtain a ruling on summary determination of non-infringement.
In this case, Certain Digital Set-Top Boxes And Components Thereof, Inv. No. 337-TA-712, the Commission instituted the investigation to determine whether Respondent Cablevision's digital set-top boxes and components thereof infringe five (5) patents asserted by Complainants Verizon Communications Inc. and Verizon Services Corp. (collectively "Verizon"). Early in the case Judge Gildea issued Ground Rules providing that "the parties will be bound by their proposed constructions for disputed claim terms on the date the joint submission of disputed claims terms is due." The parties positions on claim construction were required to be identified early in the case. With respect to disputed terms, the Judge invited the parties to submit comments as to whether a Markman hearing at least two months in advance of the hearing would be useful. The Judge ultimately declined to hold a Markman, apparently because no party had requested such a hearing. Complainant had specifically requested that the Judge decline to hold a Markman hearing.
Thereafter, Respondent moved for summary determination of non-infringement, asserting a construction of certain claim terms and alleging no dispute as to any material fact. In denying the motion, Judge Gildea noted that there was a dispute between the parties on construction of the claim terms at issue and held that because of such dispute Respondent had not demonstrated that it is "entitled to a summary determination as a matter of law." Judge Gildea noted that:
Other administrative law judges have followed the same practice. For example in Certain 3G Mobile Handsets and Components, Inv. No. 337-TA-613, Order No. 32 (U.S.I.T.C., April 22, 2008), the administrative law judge granted summary determination on issues where the movant "accepted" the claim constructions of the non-movant but the judge declined to address issues where there was a dispute about claim construction. See id. at n.6.
Judge Gildea further stated that he had previously ordered the parties to provide proposed claim constructions early in the case, and that he had also ruled that the disputed claim terms would not be interpreted in advance of the evidentiary hearing.
The ruling in this case illustrates the importance of negotiating undisputed claim terms and/or seeking a Markman hearing to construe those terms in circumstances where a party seeks to advance non-infringement position(s) by summary determination - at least in cases with Judge Gildea - and where the issue of infringement arguably turns on the legal question of claim construction. Here the Judge had considered the possibility of resolving disputed claim terms by a pre-trial Markman hearing. After concluding that there would be no such hearing, and hence, that there would be no pre-trial construction of the asserted claims, the Judge also rejected the request for resolution of disputed claim terms in the motion for summary determination.