In a recently issued claim construction order, Chief Administrative Law Judge Bullock held that terms included in all asserted claims are indefinite. He accordingly found the asserted claims invalid, stayed the Investigation, and invited Respondents to file a motion for summary determination.
Certain Electrical Connectors, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1043, instituted on March 14, 2017, pursuant to a complaint filed by J.S.T. Corporation. The complaint alleges that Respondents Robert Bosch GmbH, Bosch Automotive Products (Suzhou) Co., Ltd., Robert Bosch LLC, Robert Bosch, Sistemas Automotrices, S.A. de C.V., Robert Bosch Ltda., Hon Hai Precision Industry Co., Ltd, and Foxconn Interconnect Technology Ltd. import, sell after importation, or sell for importation products that infringe claims 2, 4, 9, and 10 of U.S. Patent No. 7,004,766.
Chief Administrative Judge Bullock held a claim construction hearing on August 30, 2017, wherein the parties addressed three phrases in the asserted claims. In his September 28, 2017, order, CALJ Bullock found that one of these phrases which is included in each of the asserted claims—“end regions”/ “proximate to two opposite ends”/ “the second holes are provided in a center region of the tine plate between the end regions”—is indefinite pursuant to 35 U.S.C. § 112, paragraph 2.
CALJ Bullock reasoned that a person of ordinary skill in the art would not be able to discern the boundaries of the claimed “end region” and “center region” in the tine plate based on the specification and prosecution history of the ’766 patent. He further found inappropriate Complainant’s attempt to “cobble together possible [specification] support” for an understanding of the claim terms, in view of the Supreme Court’s holding in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). He noted that “[a]fter Nautilus, courts must find that the patent provides ‘clear notice of what is claimed.’”
The CALJ found each of the asserted claims are invalid because they include claim terms that fail to meet the definiteness requirement of 35 U.S.C. § 112, paragraph 2. He further determined that he need not construe the other two claim phrases in light of his holding. The CALJ concluded by staying the Investigation, sua sponte, and invited the parties to “take the steps they deem appropriate such as filing a motion for summary determination or a motion to terminate the Investigation.”
Unlike district courts that generally have local rules governing the claim construction process, there are no ITC procedural rules concerning how or when an ALJ is to construe patent claims. Historically, claim construction in the ITC was addressed at trial. However, about a decade ago, certain ALJs began conducting Markman hearings earlier in the proceedings. That trend has increased over the years, and now most of the ALJs conduct Markman hearings in at least some of their investigations.
As this case demonstrates, in the proper circumstance, an early claim construction hearing can be an opportunity for a party to prevail on a dispositive issue. Furthermore, in light of the Supreme Court’s relatively recent ruling in Nautilus, we expect that more Respondents will assert invalidity defenses based on indefiniteness.