For the first time in any of his cases, on April 19, 2010, Chief Judge Paul J. Luckern issued Order No. 11 Setting a Procedural Schedule For Markman Hearing in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof, Inv. No. 337-TA-703. See also Mobil Telephones, Orders Nos. 5 and 8, 337-TA-703. In this Order, Chief Judge Luckern addressed at length several procedural questions in the event a Markman proceeding is warranted, including, inter alia, whether: (1) the ALJ should issue claim construction in the form of an Order under Commission Rule 210.15 (19 C.F.R. §210.15) or in the form of an Initial Determination (“ID”) under Commission Rule 210.42(c) as a summary determination under Commission Rule 210.18; and (2) whether a Markman proceeding under Commission summary determination Rule 210.18 permits live testimony or evidentiary presentations.

Chief Judge Luckern ruled that he would issue claim construction in the form of an ID under Commission Rule 210.42(c) in response to summary determination motions filed by the parties on the issue of claim construction under Commission Rule 210.18 by May 10, 2010. Chief Judge Luckern further ruled that summary determination does permit live testimony or evidentiary presentations and that he did not object to the parties submitting direct witness statements on the issue of claim construction in this case to save time if the parties agreed to only a one day Markman hearing. Chief Judge Luckern noted that this investigation was “particularly suited for a separate Markman hearing” because “all the respondents have moved for a Markman hearing” and “complainant. . . has familiarity with Markman hearings involving claim construction of the [asserted] patent.” Chief Judge Luckern noted that the Complainant Kodak and Respondents Apple and RIM were involved in a Markman hearing on the same patent claims on March 23, 2010 in a parallel federal district court action. Thus, the facts supporting Chief Judge Luckern’s decision to hold a Markman hearing were in his own words “particularly suited” to such a hearing.

He ordered a Markman hearing to be held on May 24, 2010 to provide ample time for an Initial Determination on claim construction to issue, for the requisite 30-day period for the Commission’s decision on whether to review the initial determination, and for the parties to prepare their prehearing briefs based upon the adjudicated claim construction. The Markman hearing took place in the 703 investigation during a three day period, 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 issued his claim construction ruling as an ID on summary determination on June 22, 2010, eight days before the close of fact discovery.

The Commission issued a Notice to review Chief Judge Luckern’s ID on claim construction in the 703 investigation on July 22, 2010. Specifically, the Commission noted that it is “particularly interested in 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 Commission’s rules of practice and procedure as currently written.” In this regard, the parties were requested by the Commission to respond to the following hypothetical analysis:

As used in rule 210.18(a), the term “issues to be determined in the investigation” can be viewed as limited to claims and affirmative defenses; a “part” of such an issue includes an element (or subpart thereof) of a claim or affirmative defense. Thus, the following could be a non-exhaustive list of examples of issues or parts thereof that are covered by rule 210.18(a): violation, importation, infringement, domestic industry (technical or economic prong), invalidity on any basis (such as anticipation or obviousness), unenforceability. Claim construction may be a necessary underpinning to the resolution of certain issues or elements, and may be part of a summary determination that addresses an issue or element. On its own, however, claim construction might not be viewed as constituting such an issue or element.

The parties were requested to provide written submissions no later than the close of business on August 5, 2010 and reply submissions no later than the close of business on August 16, 2010. No further submissions will be permitted unless ordered by the Commission. When this article went to press, the Commission had not yet issued its decision.

Chief Judge Luckern has ordered the same procedure be used in Certain Electronic Devices with Multi-Touch Enabled Touch Pads and Touchscreens, Inv. No. 337-TA-714, Order No. 8; Markman Proceeding Schedule (June 22, 2010). 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. The parties submitted motions for summary determination of claim construction in Certain Electronic Devices on July 14, 2010 and a Markman hearing was held on August 18-19, 2010. Notably, 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 in Order No. 13 terminating the investigation as to that asserted claim. Practitioners will closely watch to see whether the Chief Judge will permit Markman hearings in more routine future cases.