I. Summary of Recent ITC Decision

This article discusses an important recent decision by the United States International Trade Commission (“ITC” or “Commission”) in Mobile Telephones And Wireless Communication Devices Featuring Digital Camera, And Components Thereof, Inv. No. 337-TA-703 (“Mobile Telephones”). On October 20, 2010, in Mobile Telephones, the ITC resolved an important issue regarding claim construction procedures to be followed when patent infringement claims are litigated in ITC Section 337 Investigations, namely, whether claim construction rulings issued by the presiding Administrative Law Judge (“ALJ”) prior to the evidentiary hearing on the merits of all issues in the case (“trial”) may properly be issued in the form of an Initial Determination (“ID”) subject to immediate appellate review by the full ITC prior to trial. The ITC determined that “in the interest of the expeditious conclusion of section 337 investigations . . . a ruling on claim construction is properly issued in the form of an order,” not an ID subject to immediate review by the ITC. See Notice Of Commission Determination That June 22, 2010, Initial Determination Is An Order Rather Than An Initial Determination, Inv. No. 337-TA- 703.

A. Procedural Background

Chief Judge Luckern previously adopted a procedure in Mobile Telephones, Inv. No. 337-TA- 703 permitting the parties to move for summary determination on the issue of claim construction. Pursuant to such motions, the Markman hearing in the 703 investigation took place from May 24-26, 2010. Each of the three parties – Kodak, Apple and RIM – presented live testimony of a single expert witness followed by closing arguments. Chief Judge Luckern then issued his claim construction rulings on June 22, 2010 in the form of an ID under ITC Rules 210.18(f) and 210.42(c), subject to immediate review by the full ITC (or else be deemed to become the Final Determination of the ITC if the ITC did not elect to review it within 30 days). The ITC issued a Notice to review Chief Judge Luckern’s ID on claim construction on July 22, 2010, requesting “briefing on the question of the legal authority for addressing the issue of claim construction as a matter for summary determination and treating the claim construction as an initial determination under the ITC’s rules of practice and procedure as currently written.” Specifically, the ITC review Notice expressed doubt that claim construction, on its own, constituted “all or any part of the issues to be determined in the investigation” eligible for summary determination under ITC Rule 210.18(a). The parties submitted responsive written submissions on August 5, 2010 and reply submissions on August 16, 2010. Because the ITC had not issued its decision on Chief Judge Luckern’s claim construction ID prior to trial (which was held on September 1, 2, 3, 7, 8 and 9, 2010), on the eve of trial, Chief Judge Luckern issued Order No. 27 instructing the parties to treat the ID as an order, which ultimately was the same approach adopted by the ITC.

B. ITC Ruling

On October 20, 2010, the ITC issued an Order ruling that the June 22, 2010 Initial Determination on claim construction issued by Chief Judge Luckern “is an order rather than an initial determination.” The ITC went on to find that:

Commission Rule 210.42 does not include claim construction in the list of issues that must be decided in the form of an initial determination. Nor is claim construction properly the subject of a motion for summary determination under Commission Rule 210.18 since claim construction, standing alone, is not an “issue” or “any part of an issue” within the meaning of that rule.

The ITC concluded its Order by stating that,

“[T]he Commission determines in its discretion and in the interest of the expeditious conclusion of section 337 investigations that a ruling on claim construction is properly issued in the form of an order.”

C. Significance of the Ruling

According to the ITC’s October 20, 2010 Order, an ALJ’s pretrial claim construction rulings cannot be issued in the form of an Initial Determination and can only be issued in the form of an Order under ITC Rule 210.15. Such orders are not subject to ITC review and not final. At a subsequent evidentiary hearing, a party could present evidence of an alternative claim construction. Chief Judge Luckern invited the parties to do so in Mobile Telephones, Inv. No. 337-TA-703. The Chief Judge issued Order No. 27 prior to the evidentiary hearing in that case advising that the Judge “will treat such ID as an Order and the parties will have to convince the administrative law judge at the evidentiary hearing that each such claim construction in such ID is in error.” Alternatively, evidence of alternative claim constructions may also be presented by way of “offers of proof” under APA statute 5 U.S.C. §556(c) rather than live testimony in order to streamline trial.

Upon completion of trial and post trial briefing, the ALJ will issue an Initial Determination-Final On Violation, including the ALJ’s rulings on claim construction. This ID is then subject to review by the ITC on all issues, including claim construction.

II. Pretrial Markman Hearings Continue To Be Held

Chief Judge Luckern also held a pretrial Markman hearing in Electronic Devices With Multi-Touch Enabled Touch Pads And Touchscreens. Inv. No. 337-TA-714 (“Electronic Devices”). This case is similar to the 703 investigation in that the parties were previously involved in a Markman hearing regarding the same patent in a parallel district court action. However, in Electronic Devices, Respondent filed a motion for summary determination on July 14, 2010 in advance of the Markman hearing arguing that the asserted claim limitations at issue are means-plus-function terms covered by 35 U.S.C. §112 ¶6, that the patent specification does not disclose a corresponding structure for said means, and therefore, each of the asserted claims is indefinite and thus invalid. The ITC investigative attorney also filed a motion for summary determination on July 27, 2010, that the asserted claims are indefinite and invalid. The Complainant moved prior to the Markman hearing to terminate the investigation as to one of the asserted claims of the patent in issue in order to “streamline the Markman hearing process and the evidentiary hearing.” Complainant’s motion was granted and an ID issued (Order No. 13) terminating the 714 investigation as to that asserted claim.

The Markman hearing was held in Electronic Devices on August 18-19, 2010. On September 28, 2010, Chief Judge Luckern issued an Initial Determination relating to the motions for summary determination filed by Respondent and the ITC investigative attorney, finding the asserted claims indefinite and invalid. A petition for review by the ITC was filed by Complainant on October 6, 2010.

Administrative Law Judge E. James Gildea recently held his first full Markman hearing in Certain Electronic Products, Including Mobile Phones, Portable Music Players And Computers, Inv. No. 337-TA-701. Citing the fifty claims and seven patents at issue, Judge Gildea held a Markman hearing on August 11, 2010 to narrow the issues before expert discovery and the evidentiary hearing. Judge Gildea issued a confidential Order Construing The Terms Of The Asserted Claims Of The Patents At Issue on November 1, 2010.

Judge Gildea also ordered a Markman hearing in Electronic Devices With Image Processing Systems, Components Thereof, And Associated Software, Inv. No. 337-724, to be held on November 9, 2010. Judge Gildea specified that “the number of disputed patent claim terms to be addressed at the Markman hearing will not exceed 16 terms.”

Judge Bullock held a Markman hearing on June 14, 2010 in Mobile Communication and Computer Devices And Components Thereof, Inv. No. 337-TA-704 and issued Order No. 18: Construing the Terms of the Asserted Claims of the Patents at Issue on July 30, 2010. There were four patents at issue. Prior to the Markman hearing and after the hearing, the parties conferred and came to agreement regarding construction of certain disputed claim terms, and Complainant also agreed to drop several asserted patent claims.

Judge Bullock also held a technology tutorial and Markman hearing in Portable Electronic Devices And Related Software, Inv. No. 337-TA- 721, on October 25, 2010.

While Administrative Law Judge Robert K. Rogers, Jr. has adopted a procedure for “Markman Hearings on Claim Construction” in his Ground Rules, similar to Judges Bullock and Essex, in response to a question from the audience at the International Trade Commission Trial Lawyers Association luncheon on July 21, 2010, Judge Rogers mentioned that he continues to be disinclined to hold Markman hearings because of the expedited nature of ITC proceedings.

Thus, parties need to be aware of the specific claim construction practices and procedures utilized by the particular ALJ assigned to their case and the various ways to strategically benefit from those procedures.