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Claim Construction

Did You Know How Claim Construction Is Handled In Patent-Based Section 337 Investigations?

By Eric Schweibenz
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Jul
06
There are no general ITC rules regarding the procedure for how an Administrative Law Judge (ALJ) is to construe claims and, therefore, claim construction is ALJ specific.  Historically, claim construction testimony and evidence in section 337 investigations has been presented during the evidentiary hearing along with other arguments, including, e.g., infringement and invalidity and, thus, there was no separate Markman hearing and no separate ruling.  In this respect, the parties to an investigation typically received the ALJ’s claim construction of disputed terms for the first time as part of the ALJ’s Initial Determination (ID).  More recently, certain ALJs have conducted Markman hearings prior to the evidentiary hearing.  In investigations where a Markman hearing is held, there is no requirement that the ALJ provide a separate claim construction ruling prior to the issuance of the ID.  Since the ALJ issues the ID after the evidentiary hearing (absent special circumstances), the parties are often forced to make arguments based on the competing claim constructions asserted by the other parties so as not to waive any arguments.  However, ALJ Essex recently issued an Order that construed disputed claim terms prior to an evidentiary hearing in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661) (for more on this matter, see our June 29 post).

How a given ALJ handles claim construction can be discerned by examining each ALJ’s recently issued ground rules.  The Ground Rules of ALJs Rogers, Bullock, and Essex specifically address claim construction in a provision entitled “Markman Hearing on Claim Construction.”  This provision provides a general outline and structure of the procedural schedule surrounding a Markman hearing if the ALJ determines that a Markman hearing would be beneficial to the investigation.
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ALJ Luckern Issues Public Version Of Initial Determination Finding No Violation In Certain 3G Mobile Handsets (337-TA-613)

By Eric Schweibenz
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Sep
23
Further to our August 17 post, on September 17, 2009, Chief ALJ Paul J. Luckern issued the heavily redacted public version of his 245 page August 14, 2009 Final Initial and Recommended Determinations (“ID”) in Certain 3G Mobile Handsets and Components (Inv. No. 337-TA-613).

By way of background, InterDigital Communications, LLC and InterDigital Technology Corp. (“InterDigital”) filed a complaint against Nokia Inc. and Nokia Corp. (“Nokia”) in August 2007 alleging that importation, sale for importation, and sale within the U.S. after importation of certain 3G mobile handsets and components infringed InterDigital’s ‘004, ‘966, ‘847 and ‘579 patents.  According to the ID, ALJ Luckern found no violation of Section 337, determined that the asserted claims are not invalid and not infringed, and also determined that a domestic industry exists with respect to the patents-in-suit.
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ALJ Luckern Requests Written Submissions From Parties In Certain Light Emitting Diode Chips (337-TA-674)

By Eric Schweibenz
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Nov
17
On November 16, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 23 (dated October 27, 2009) in Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674).  In the order, ALJ Luckern requested that the parties file written submissions answering various questions relating to claim construction, infringement, validity, and enforceability of the patents asserted in the investigation.  In total, ALJ Luckern posed 23 questions to Complainant Gertrude Neumark Rothschild (“Rothschild”) and 14 questions to Respondents Toshiba Corp. and Pansonic Corp. (collectively, “Respondents”).

The order required that Rothschild and Respondents file their answers to ALJ Luckern’s questions by noon on November 3, 2009.  Responses to the opposing party’s answers were required by the close of business on November 6, 2009.  The Commission Investigative Staff’s (“Staff”) responses to the private parties’ answers and responses were due by noon on November 9, 2009.  Finally, the private parties were required to file reply submissions, along with statements indicating by exhibit number which exhibits supported their initial answers to the ALJ’s questions, by noon on November 12, 2009.
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ALJ Bullock Issues Claim Construction Order in Certain Flash Memory Chips (337-TA-664)

By Eric Schweibenz
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Feb
19
On February 12, 2010, ALJ Charles E. Bullock issued Order No. 34, construing terms of the asserted claims of the patents-in-suit in Certain Flash Memory Chips and Products Containing Same (Inv. No. 337-TA-664).

By way of background, the Complainants in this investigation are:  Spansion, Inc. and Spansion LLC (collectively, “Spansion”).  The Respondents in this investigation are:  Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; Samsung International, Inc.; Samsung Semiconductor, Inc.; Samsung Telecommunications America, LLC; Apple Inc.; AsusTek Computer, Inc.; Asus Computer International, Inc.; Hon Hai Precision Industry Co., Ltd.; Kingston Technology Co., Inc.; Kingston Technology (Shanghai) Co., Ltd.; Kingston Technology Far East Co.; Kingston Technology Far East (Malaysia) Sdn. Bdh.; Lenovo Group Ltd.; Lenovo (US), Inc.; Lenovo (Beijing) Ltd.; International Information Products (Shenzhen) Co., Ltd.; Lenovo Information Products (Shenzhen) Co., Ltd.; Lenovo (Huiyang) Electronic Industrial Co., Ltd.; Shanghai Lenovo Electronic Co., Ltd.; PNY Technologies, Inc.; Research in Motion, Ltd.; Research in Motion Corporation; Sony Corporation; Sony Corporation of America; Sony Ericsson Mobile Communications AB; Sony Ericsson Mobile Communications (USA) Inc.; Beijing SE Putian Mobile Communications Co., Ltd.; Transcend Information, Inc.; Transcend Information, Inc. (USA); Transcend Information Inc. (Shanghai Factory); Verbatim Americas LLC; and Verbatim Corporation (collectively, “Respondents”).
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ALJ Luckern Sets Procedural Schedule And Makes Comments Regarding Markman Hearing In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
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Apr
05
On March 31, 2010, Chief ALJ Paul J. Luckern issued Order No. 5, setting the procedural schedule in Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

In the Order, ALJ Luckern set the procedural schedule for the investigation, including a September 1, 2010 start date for the evidentiary hearing.
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ALJ Luckern Sets Procedural Schedule For Markman Hearing In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Apr
28
On April 26, 2010, Chief ALJ Paul J. Luckern issued the public version of Order No. 11 (dated April 19, 2010):  Setting Procedural Schedule for Markman Hearing in Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

The Order addressed a motion filed on April 12, 2010, by Respondents Apple Inc., Research In Motion, Ltd., and Research In Motion Corp. (collectively, “Respondents”) requesting a Markman hearing “based on the filing, under Commission rule 210.18, of simultaneous motions for summary determination on proposed claim constructions.”  Respondents’ motions were filed pursuant to Order No. 5, which determined that any request for a Markman hearing be made by motion.  See our April 5, 2010 post for more details.
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ALJ Luckern Orders Markman Hearing In Certain Electronic Devices With Multi-Touch Enabled Touchpads And Touchscreens (337-TA-714)

By Eric Schweibenz
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Jun
03
On June 1, 2010, Chief ALJ Paul J. Luckern issued Order No. 5 in Certain Electronic Devices With Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).  In the Order, ALJ Luckern ordered that a Markman hearing take place and that the parties submit proposed procedural schedules by June 4, 2010.

By way of background, the Complainant in this investigation is Elan Microelectronics Corporation (“Elan”) and the Respondent is Apple Inc. (“Apple”).  The investigation was instituted on April 26, 2010 based on Elan’s complaint of March 29, 2010.  See our April 26 post for more details.  On May 27, 2010, the parties made written submissions and a preliminary conference was held concerning whether or not ALJ Luckern should conduct a Markman hearing in the investigation.
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ALJ Gildea Sets Markman Procedure And Orders Technology Stipulation In Certain Wireless Communications System Server Software, Wireless Handheld Devices And Battery Packs (337-TA-706)

By Eric Schweibenz
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Jun
10
On June 9, 2010, ALJ E. James Gildea issued Order No. 8 and Order No. 9 in Certain Wireless Communications System Server Software, Wireless Handheld Devices and Battery Packs (Inv. No. 337-TA-706).  In Order No. 8, ALJ Gildea set out the rules governing the Markman hearing that is currently scheduled for June 24, 2010.  In Order No. 9, ALJ Gildea ordered that the private parties meet and confer and, after consultation with the Commission Investigative Staff (“OUII”), submit a joint stipulation regarding the technology at issue in the investigation.

By way of background, the Complainant in this investigation is Motorola, Inc. (“Motorola”) and the Respondents are Research in Motion, Ltd. and Research in Motion Corp.  The investigation was instituted on February 19, 2010 based on Motorola’s complaint of January 22, 2010.  See our February 22, 2010 post for more details.  ALJ Gildea’s procedural schedule calls for a Markman hearing on June 24, 2010 and gives August 6, 2010 as the estimated date for a Markman ruling.  See our April 7, 2010 post for more details.
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ALJ Gildea Sets Markman And Technology Tutorials In Certain Digital Set-Top Boxes (337-TA-712)

By Eric Schweibenz
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Jun
17
On June 16, 2010, ALJ E. James Gildea issued Order No. 10:  Setting Markman and Technology Tutorials in Certain Digital Set-Top Boxes and Components Thereof (Inv. No. 337-TA-712).

In the Order, ALJ Gildea determined that “[t]here will be no Markman hearing in this Investigation in advance of the main hearing.”  ALJ Gildea further determined, however, that “technology tutorials will be useful in setting the stage for the hearing.”  ALJ Gildea permitted the private parties 30 minutes per side and indicated that “[l]egal argument during said presentations will not be permitted.”
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ALJ Gildea Sets Markman Procedure And Orders Technology Stipulation In Certain Electronic Devices (337-TA-701)

By Eric Schweibenz
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Jun
17
ALJ E. James Gildea issued Order No. 14 and Order No. 15 in Certain Electronic Devices, Including Mobile Phones, Portable Music Players, And Computers (Inv. No. 337-TA-701).  In Order No. 14, ALJ Gildea ordered that the private parties meet and confer and, after consultation with the Commission Investigative Staff, submit a joint stipulation regarding the technology at issue in the investigation.  Order No. 15 set out the rules governing the Markman hearing that is currently scheduled for August 11, 2010.

By way of background, Complainants Nokia Corporation and Nokia Inc. asserted over fifty claims of seven patents against Respondent Apple Inc. in this Investigation.  ALJ Gildea decided that an early Markman hearing would assist in streamlining the issues for the evidentiary hearing and final initial determination in this Investigation.  See our April 27, 2010 post for more details.
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ALJ Luckern Issues Initial Determination on Claim Construction In Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Jun
23
On June 22, 2010, Chief ALJ Paul J. Luckern issued a Notice regarding the Markman hearing Initial Determination (ID) in Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

For background on the procedural history leading to the Markman hearing in this investigation, please see our April 28, 2010 post.
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ALJ Luckern Issues Public Version of Initial Determination on Claim Construction In Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Jul
21
On July 15, 2010, Chief ALJ Paul J. Luckern issued the public version of the Initial Determination (“ID”) construing terms of the asserted claims of U.S. Patent No. 6,292,218 (the ‘218 patent) in Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and Respondents are Research In Motion, Ltd. and Research In Motion Corporation (collectively, “RIM”) and Apple Inc. (“Apple”).
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ALJ Luckern Sets Procedural Schedule And Provides Comments On Markman Hearings In Certain Biometric Scanning Devices (337-TA-720)

By Eric Schweibenz
|
Jul
23
On July 19, 2010, Chief ALJ Paul J. Luckern issued Order No. 7 in Certain Biometric Scanning Devices, Components Thereof, Associated Software, and Products Containing the Same (Inv. No. 337-TA-720).

In the Order, ALJ Luckern set the procedural schedule for the investigation and included provisions for the early exchange of claim construction terms and proposed constructions.  ALJ Luckern did not include a separate Markman hearing in the procedural schedule but indicated that he remains open to considering motions for such a hearing.
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ALJ Bullock Rules On Claim Construction In Certain Mobile Communications And Computer Devices (337-TA-704)

By Eric Schweibenz
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Aug
09
On July 30, 2010, ALJ Charles E. Bullock issued Order No. 18 in Certain Mobile Communications and Computer Devices and Components Thereof (Inv. No. 337-TA-704).  In the Order, ALJ Bullock construed various claim terms in the asserted claims of U.S. Patent Nos. 5,455,599 (the ‘599 patent), 5,379,431 (the ‘431 patent), 6,424,354 (the ‘354 patent), and 5,920,726 (the ‘726 patent).

By way of background, the Complainant in this investigation is Apple Inc. (“Apple”) and the Respondents are Nokia Corporation and Nokia Inc. (collectively, “Nokia”).  The investigation was instituted on February 18, 2010 based on Apple’s complaint of January 15, 2010.  See our February 22, 2010 post for more details.  On April 26, 2010, ALJ Bullock granted the Commission Investigative Staff’s (“OUII”) motion for partial consolidation of the investigation with Inv. No. 337-TA-710.
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ALJ Gildea Sets Markman Hearing And Revised Procedural Schedule In Certain Electronic Devices With Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
Sep
15
On September 7, 2010, ALJ E. James Gildea issued Order No. 5 in Certain Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724).

In the Order, ALJ Gildea set November 9, 2010 as the date for the Markman hearing determining that “an early Markman hearing will assist in streamlining the issues for the evidentiary hearing and final initial determination in this Investigation.”  ALJ Gildea further determined that since the schedule for the investigation requires rapid preparation, “[t]he parties should meet and confer in an effort to resolve the meaning of as much of the claim language at issue as possible, as the number of disputed patent claim terms to be addressed at the Markman hearing will not exceed 16 terms.”  (Emphasis in original).  ALJ Gildea’s Order also included a revised procedural schedule and the rules governing the Markman hearing.
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ALJ Bullock Issues Notice Regarding Tutorial And Markman Hearing In Certain Portable Electronic Devices and Related Software (337-TA-721)

By Eric Schweibenz
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Sep
16
On September 10, 2010, ALJ Charles E. Bullock issued a notice in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-721).

According to the notice, ALJ Bullock scheduled the technology tutorial and Markman hearing to take place on October 25, 2010.
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Federal Circuit to Hear Oral Argument in Qimonda Appeal on January 14

By Eric Schweibenz
|
Jan
12
On January 14, 2011, the Federal Circuit is scheduled to hear oral argument in Qimonda AG v. ITC (2010-1270).

By way of background, on November 20, 2008, Qimonda AG (“Qimonda”) filed a complaint with the ITC against LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings, Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) (collectively, “Respondents”) alleging violation of Section 337 by the importation, sale for importation, or sale after importation of chips and products containing chips that infringed seven patents, including U.S. Patent No. 5,851,899 (“the ‘899 patent”).  After the Commission instituted an investigation (337-TA-665) and an evidentiary hearing was held regarding four of the seven patents, ALJ Robert K. Rogers, Jr. issued an initial determination (“ID”) on October 14, 2009 in which he found no violation of Section 337 because the four asserted patents were either invalid or not infringed, and because no industries existed in the United States for any of the patents asserted at the hearing.  Qimonda petitioned for review with respect to the ‘899 patent and two other patents, and the Commission issued its determination not to review ALJ Rogers’ ID as to the ’899 patent on January 29, 2010.  Qimonda appealed the Commission’s decision only with respect to the ’899 patent.
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ALJ Bullock Issues Claim Construction Order In Certain Portable Electronic Devices and Related Software (337-TA-721)

By Eric Schweibenz
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Feb
04
On January 28, 2011, ALJ Charles E. Bullock issued Order 29 construing the terms of the asserted claims of the patents-in-suit in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-721).

By way of background, the Complainant in this investigation is HTC Corp. of Taiwan (“HTC”).  HTC is alleging a violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and related software that infringe certain claims of U.S. Patent Nos. 6,999,800 (“the ‘800 patent”), 7,716,505 (“the ‘505 patent”), 5,541,988 (“the ‘988 patent”) and 6,320,957 (“the ‘957 patent”) by Respondent Apple, Inc. (“Apple”).  A Markman hearing was held on October 25-26, 2010.
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ALJ Luckern Issues Public Version of Claim Construction Order In Certain Electronic Devices With Multi-Touch Enabled Touchpads And Touchscreens (337-TA-714)

By Eric Schweibenz
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May
05
On May 2, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 17 (dated November 9, 2010) in Certain Electronic Devices with Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).  In the Order, ALJ Luckern construed various claim terms in the asserted claims of U.S. Patent No. 5,825,352 (the ‘352 patent).

By way of background, the Complainant in this investigation is Elan Microelectronics Corporation of Taiwan (“Elan”) and the Respondent is Apple Inc. (“Apple”).  The investigation was instituted on April 23, 2010, based on Elan’s complaint filed on March 29, 2010.  See our April 26, 2010 post for more details.  ALJ Luckern conducted a Markman hearing on August 18 and 19, 2010 with all parties participating, followed by claim construction submissions and replies.
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ALJ Essex Issues Claim Construction Order In Certain Mobile Devices (337-TA-744)

By Eric Schweibenz
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May
24
On May 17, 2011, ALJ Theodore R. Essex issued the public version of Order No. 6 (dated April 22, 2011) in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744).  In the Order, ALJ Essex construed various claim terms in connection with the asserted U.S. Patent Nos. 5,579,517 (the ‘517 patent), 5,758,352 (the ‘352 patent), 6,578,054 (the ‘054 patent), 6,370,566 (the ‘566 patent), 6,621,746 (the ‘746 patent), 6,826,762 (the ‘762 patent), 7,644,376 (the ‘376 patent), 6,909,910 (the ‘910 patent), and 5,564,133 (the ‘133 patent).

By way of background, the Complainant in this investigation is Microsoft Corp. (“Microsoft”) and the Respondents are Motorola, Inc. and Motorola Mobility, Inc. (collectively, “Motorola”). According to the Order, ALJ Essex conducted a Markman hearing on March 7-8, 2011.
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The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important ITC issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.