By Eric Schweibenz
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.

In stating his view on whether a Markman hearing should be held, ALJ Luckern quoted extensively from the transcript of the July 12, 2010 preliminary conference in the investigation.  At that conference, ALJ Luckern had explained how he was doubtful as to the value of Markman hearings due to the fact that the Commission has the ability to overturn an ALJ’s claim construction findings at any time during the proceeding.

In particular, ALJ Luckern pointed to his recent initial determination on claim construction in Inv. No. 337-TA-703 (see our July 21, 2010 post for more details) and explained how the Commission’s delay in reviewing that determination could potentially cause some difficulty.  “I think that it would be helpful to know, but I have no idea what the Commission is going to do…And until I know what they are doing, and there has only been one Markman decision that I have issued so far, but the Commission may have good reasons not to do anything about it…And if that is the case, then I really don’t see much value in Markman hearings here, because I can’t see bringing parties here for a hearing, and turning away claims undetermined, and not know what the Commission is going to do.”

The ALJ further explained that “as you all know, this is an administrative procedure type of hearing, and the Commission can make new findings of fact based on the record, and send it back to me, and we could start all over again…And you can imagine what the expenses would be for the parties if we have to have a second evidentiary hearing based on the fact that the Commission would not agree with me.”

Accordingly, ALJ Luckern stated at the preliminary conference that “I am not going to do anything with respect to a Markman hearing.  If the Commission decides something to what I have filed [in the 703 investigation], then I may do it.”  Thus, while the procedural schedule does not currently include a date for a Markman hearing, it appears that ALJ Luckern has not completely foreclosed the possibility of conducting one, particularly if the Commission moves quickly in reviewing his Markman determination in the 703 investigation.

Lastly, according to the Order, the evidentiary hearing in the 720 investigation will commence on March 7, 2011.