By Eric Schweibenz
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.

Complainant Eastman Kodak Company (“Kodak”), argued that the "proper and most efficient way to determine claim construction in this Investigation is on a full record developed at the evidentiary hearing" but that if the ALJ determined that a separate Markman proceeding is warranted, “he should issue claim construction in the form of an order that issues in the ordinary course, and not as a summary determination; and that summary determinations do not permit live testimony or evidentiary presentations.”  According to the Order, Kodak further argued that under Commission Rule 210.18(a), a Markman decision cannot issue as an initial determination since “a determination as to the meaning of one or more claim terms is not an ‘issue or part of an issue’ because such a ruling does not dispose of an element of a Section 337 offense.”

According the Order, the Commission Investigative Staff (“OUII”) argued that “on balance the potential benefits that could be gained from a Markman hearing outweigh any undue prejudice that a party may suffer as a result of said hearing at this early stage of the investigation.”  OUII  further noted that Commission Rule 210.18, does “not appear to provide for the taking of oral testimony,” and “rather than the filing of motions for summary determination and the issuance of an initial determination on claim construction, issuance of an order on claim construction would be the more appropriate procedure.”

ALJ Luckern determined that this Investigation was “particularly suited for a separate Markman hearing,” because all Respondents have moved for such a hearing, and Kodak has familiarity with Markman hearings on the patent at issue (U.S. Patent No. 6,292,218 (the ‘218 patent)), through a Markman hearing in a related Texas District Court action on March 23, 2010 against RIM, and the fact that Kodak, “will rely on the claim construction [of the ‘218 patent] made in an ID in the 663 investigation.”

Contrary to Kodak’s arguments that live testimony cannot be considered by an ALJ in connection with summary determination motions, ALJ Luckern held that when “Commission rule 210.18 was originally written, said Fed. R. Civ. P. 56 did allow for oral testimony,” and that Rule 56 “exists in conjunction with Fed. R. Civ. P. 43(c) (formally rule 43(e)), which authorizes the use of oral testimony on motions,” including summary judgment motions.  ALJ Luckern further determined that although “granting a summary determination would be inappropriate if there is any disputed issue of material fact,” claim construction “is a question of law for the administrative law judge to decide.”

ALJ Luckern further determined that issuing a claim construction order, rather than an initial determination, may mean that an investigation will eventually be remanded by the Commission thus possibly increasing the costs of a Section 337 proceeding and causing an extension of the target date.

With respect to Kodak’s allegation that “claim construction is not an ‘issue or part of an issue’ because it does not dispose of an element of a Section 337 offense, and therefore is not appropriate for summary determination under Commission rule 210.18,” ALJ Luckern found that “[c]laim construction is a critical element of, inter alia, domestic industry, infringement, and validity and thus is at least a ‘part of’ any number of issues that must be decided to find a violation of section 337.”

Accordingly, ALJ Luckern ordered a Markman briefing and hearing schedule, including a May 24, 2010 date for the Markman hearing.  ALJ Luckern also determined that he “has no objection to use of witness statements for direct testimony for the forthcoming Markman hearing, if the parties, despite their agreement to a one day Markman hearing, believe that time is of the essence.”