Judge E. James Gildea had previously been holding what he calls a “Markman tutorial” – as distinguished from a pre-trial Markman hearing – in which each party has thirty (30) minutes to summarize its legal arguments with respect to claim construction on the same day as, but prior to, the commencement of trial. Judge Gildea held Markman tutorials in at least three recent investigations: Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing Same, Order No. 20, Inv. No. 337- TA-666 (Aug. 17, 2009); Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same, Order No. 20, Inv. No. 337-TA-650 (April 30, 2009); and Certain Laser Imageable Lithographic Printing Plates, Order No. 21, Inv. No. 337-TA-636 (Feb. 20, 2009).
However, like Chief Judge Luckern, Judge Gildea also recently held his first full Markman hearing in Certain Electronic Products, Including Mobile Phones, Portable Music Players and Computers, Inv. No. 337-TA-701, Order No. 8. 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 also set dates for an anticipated date of decision on claim construction of September 10, 2010 and exchange of expert reports on September 20, 2010, and advised that one benefit of this schedule is that it “provides some time for Commission review of a Markman decision, if any, prior to the hearing.” Inv. No. 337-TA-701, Order No. 10. This mention of Commission review suggests that Judge Gildea is considering following Chief Judge Luckern’s practice and issuing his claim construction ruling as an ID under Commission Rule 210.42(c) based on a summary determination motion under Commission Rule 210.18, not as an Order under Commission Rule 210.15 as has been the practice, discussed below, of Judges Charles E. Bullock and Theodore R. Essex.
Besides joining ranks with Chief Judge Luckern in holding a pre-trial Markman hearing, Judge Gildea also joins ranks with Judges Bullock and Essex who have held pre-trial Markman hearings and issued claim construction Orders under Commission Rule 210.15 prior to trial. Unlike a claim construction ID issued under Commission Rule 210.42, Orders under Rule 210.15 are not subject to Commission review except by way of an interlocutory appeal under Commission Rule 210.24. However, no clear law exists on whether a Markman Order under Commission Rule 210.15 can be interlocutorily appealed to the Commission because no party has apparently ever requested such an appeal. In any event, four of the six current ITC Judges have now held pre-trial Markman hearings.