The US International Trade Commission (ITC) recently resolved a conflict in practice that had developed among the agency's Administrative Law Judges (ALJs) with respect to the procedural mechanism for issuing claim construction rulings (aka Markman rulings). The effect of the ITC's decision – finding that claim construction rulings are properly issued in the form of an order, rather than an initial determination (ID), is to delay review by the full Commission of such rulings. The ITC issued its determination on October 20, 2010, in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof, Inv. No. 337-TA-703 (“Certain Mobile Telephones”). The ITC Determination is available online.

Although IDs are immediately reviewable by the full Commission, ALJ orders typically are not. Thus, a claim construction ruling in the form of an order will not be reviewed by the full Commission until an ID relying on such constructions has been issued. This places a claim construction ruling in the same procedural posture as other interlocutory orders issued by an ALJ, which become subject to review by the Commission as part of an ALJ's overall determination on the merits.

In Certain Mobile Telephones, Chief ALJ Luckern issued his claim construction ruling as an ID. The parties then filed petitions and contingent petitions for review of the ID by the Commission. On July 22, 2010, the ITC issued notice of its decision to review the Claim Construction ID and requested 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 ruling as an initial determination under the Commission’s rules of practice and procedure as currently written.” In the view of the ITC, whether a claim construction ruling should be issued as an order or an ID hinged on whether claim construction could be considered an “issue” or “part of” an issue within the meaning of Commission Rule 210.18(a). Commission Rule 210.18(a) states, in relevant part, that “[a]ny party may move with any necessary supporting affidavits for a summary determination in its favor upon all or any part of the issues to be determined in the investigation.” 19 C.F.R. 210.18(a)(emphasis added). In turn, Commission Rule 210.42(c) establishes that the granting of a motion for summary determination under Rule 210.18 should be issued as an ID. 19 C.F.R. 210.42(c).

Respondents RIM and Apple Inc. asserted that Commission Rule 210.18(a) is broad enough to cover claim construction. Their argument relied largely on the proposition that infringement is an “issue” under Rule 210.18(a). According to Respondents, given that infringement is a covered issue, it follows that claim construction is “part of” that issue within the meaning of the rule, as claim construction is the first step in an infringement analysis. Respondents also argued that the same logic applies to the issue of invalidity, because claims must be construed before determining whether the patent has been anticipated or rendered obvious. In the order setting the procedural schedule for the Markman hearing in Certain Mobile Telephones, Chief ALJ Luckern agreed generally with the Respondents, holding that “[c]laim construction is a critical element of, inter alia, domestic industry, infringement, and validity and thus is at least a ‘part of’ any number of issues that must be decided to find a violation of section 337.” The Order is available online.

Complainant Eastman Kodak Company and the Office of Unfair Import Investigations (OUII) both asserted that claim construction does not fall within the bounds of Commission Rule 210.18(a). In support of their position, both parties argued that Rule 210.18(a) is only applicable to determinations that remove an issue from an investigation, such as a violation determination or a determination on issues such as infringement, invalidity, or domestic industry. According to Kodak and the OUII, because a claim construction does not result in one party successfully proving any issue, or sub-part of an issue under Section 337, it cannot be a summary determination. Kodak additionally asserted that, because the language of Rule 210.18 is directed to “material facts,” claim construction cannot be entered as a summary determination because it is a purely legal determination.

The parties also disagreed on the effect that issuance of a claim construction ruling as an ID would have on the parties and ITC. Respondents argued that a final determination on claim construction would conserve resources of the ITC and the parties, assist in adjudication by narrowing the issues and focusing the preparation for the hearing, and promote mediation and settlement. Chief ALJ Luckern took a similar stance, stating that the issuance of a claim construction ruling as an order in the regular course may mean that an investigation will eventually be remanded by the full Commission to determine whether there is a violation of Section 337 in light of the Commission's claim construction.

Complainant Kodak and the OUII asserted that treating a claim construction order as an ID would increase the burdens on the parties, the ALJ, and the ITC by forcing immediate review of claim construction in a manner that excludes rolling construction of the claims, and preclude the ALJ’s ability to construe claims in the context of a complete factual record.

With little explanation, the Commission determined that the claim construction issued by Chief ALJ Luckern was properly an order rather than an ID. In support of its position, the Commission noted that Rule 210.42 does not include claim construction in the list of issues that must be decided in the form of an initial determination. It also held that claim construction is not “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.”

Practice Tip: Parties should attempt to obtain a claim construction order early in the investigation. By doing so, a party maximizes the amount of time that it can use a claim construction order to:

  • guide settlement discussions or streamline the issues for discovery and hearing
  • find ways to alter an unfavorable claim construction before final determination.

Claim Construction Decisions in Section 337 Proceedings

Below please find examples of how claim construction decisions have been issued in other Section 337 proceedings:

  • Inv. No. 337-TA-714, Certain Electronic Devices with Multi-Touch Enabled Touchpads and Touchscreens – The presiding ALJ issued an ID granting Respondent’s motion for summary determination that Complainant was barred from advocating a claim construction different from the claim constructions advocated by Complainant and adopted by the District Court in an action concerning the same patent. The ITC reviewed the ID and, referencing its decision in Certain Mobile Telephones, determined that the ALJ’s decision was an order and not an initial determination. The ITC’s Notice is available online.
  • Inv. No. 337-TA-704, Certain Mobile Communications and Computer Devices and Components Thereof – The ALJ issued his claim construction as an order. The ALJ’s order is available online.
  • Inv. No. 337-TA-664, Certain Flash Memory Chips and Products Containing the Same – The ALJ issued his claim construction as an order. The ALJ’s order is available online.