By Eric Schweibenz
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.

According to the Order, in the May 27 submissions, Elan did not request a Markman hearing, Apple stated that it believed a Markman hearing should be held, and the Commission Investigative Staff (“OUII”) indicated that it was not opposed to a Markman hearing but that if a Markman hearing is ordered, the due dates for the private parties and OUII should be staggered “such that the private parties’ claim construction summary determination motions (with supporting declarations) are due before [OUII] is required to propose its claim construction and file its summary determination motion.”

In the Order, ALJ Luckern noted that there is only one patent involved in this investigation, U.S. Patent No. 5,825,352 (the ‘352 patent).  Further, Elan has asserted the ‘352 patent against Apple in the U.S. District Court for the Northern District of California, and claim construction briefs have already been exchanged in that related litigation.  ALJ Luckern thus determined that “in addition to this investigation being limited to one patent, for some time all the private parties in this investigation have had a familiarity with the ‘352 patent and there has been discovery going involving said patent and [the] accused products.”  He further stated that “[w]hile [OUII] has not been involved in the district court litigation, [OUII] has the opportunity to be brought up to speed.”  Finally, ALJ Luckern noted that Elan had proposed at the preliminary conference that the investigation be completed in eight months, meaning that Elan was prepared to proceed with an evidentiary hearing on all issues within five months.

In view of the above, ALJ Luckern ordered that a Markman hearing take place.  The ALJ further ordered that, no later than June 4, 2010, the parties submit “a proposed first procedural schedule limited to dates for the [Markman] hearing and which would specify in detail how the proceeding will take place,” and that they additionally submit “a proposed second procedural schedule for the evidentiary hearing on all issues.”  Finally, ALJ Luckern stated that he “expects that discovery on all issues will continue pursuant to said second procedural schedule provided no final ruling by the Commission is made on any ruling of the administrative law judge pursuant to the [Markman] hearing.”