By Eric Schweibenz
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.

ALJ Luckern also summarized issues addressed at the preliminary conference held March 30, 2010.  According to the Order, during this conference, the complainant Eastman Kodak Company, and both respondents, Research In Motion Ltd. and Research In Motion Corporation, and Apple Inc. addressed the impact of ALJ Carl C. Charneski’s March 10, 2010 Initial Determination (ID) in Inv. No. 337-TA-663 (the 663 investigation).  See our March 12, 2010 post for more details.  The 663 investigation involves the same U.S. Patent No. 6,292,218 (the '218 patent) asserted in the 703 investigation.  ALJ Luckern stated “there is no collateral estoppel and as far as said ID relates to this investigation, it is a ‘new ballgame.’”  On the other hand, ALJ Luckern also made clear that he “expects the parties to address in substance the basis of any relevant findings made in the ID and made by any other tribunal as for example the current proceedings in the Northern District of Texas and before the U.S. Patent Office.”

ALJ Luckern then explained his practice regarding Markman hearings.  ALJ Luckern noted that “I’m not against Markman hearings, but I have yet to be convinced that I ought to go that way…”  ALJ Luckern indicated that, “based on the considerable experience of this administrative law judge in past investigations, he has found it helpful to hear extrinsic evidence in resolving claim interpretation, especially in view of the technologies that were at issue.”  He further noted:  “In this investigation…even knowledge of accused devices may be helpful in any Markman hearing.”  ALJ Luckern nonetheless noted that he “is troubled by having a Markman hearing.”  According the Order, his concern relates to the effect of a post-Markman order on discovery and briefing, and “one or more parties petitioning for review of this administrative law judge's claim construction only after having had an expensive evidentiary hearing based only on his claim interpretation and issuance of a final ID on violation.”  If the Commission disagreed with the ALJ’s claim construction, then “the entire investigation would need to be redone from scratch.”  ALJ Luckern proposed alternatives to mitigate such circumstances, for example, where “the private parties and the staff agree that they would not petition for review on any claim construction following any such Markman decision.” Alternatively, “all the parties could agree that any post-Markman ruling could be made by an Initial Determination through Summary Determination, in which the administrative law judge would urge the Commission to come to an early decision as to any review.”  While the determination is pending before the Commission, “discovery and briefing would not be governed by this administrative law judge's claim construction while said Initial Determination is pending before the Commission, and would continue under any theory of claim construction argued before the administrative law judge.”  Despite ALJ Luckern’s above concerns, he concluded that “an early Markman hearing” in this case “may be desirable, in view of the knowledge of all parties involving the asserted claims, the need to keep litigation expenses at a minimum, and the tutorial given to the administrative law judge on March 30.”