On February 27, 2009, ALJ Paul J. Luckern issued the public version of his February 9, 2009 Order No. 40 in Certain 3G Mobile Handsets and Components (337-TA-613).  In the Order, ALJ Luckern denied respondents Nokia Corporation and Nokia Inc.’s (Nokia) motion for a one-day claim construction hearing and a speedy claim construction order.

According to the Order, Nokia argued in support of its motion, among other things, that “although [ALJ Luckern] does not normally conduct claim construction hearings prior to an evidentiary hearing, the unique circumstances of this investigation warrant a separate hearing.”  Specifically, Nokia argued that conducting a claim construction hearing prior to the evidentiary hearing would streamline the proceedings.  Further, Nokia pointed to a prior investigation (Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and Components Thereof (337-TA-601) (the 601 investigation)) and, according to the Order, argued that the disputed claim terms in the current investigation were identical to those in the 601 investigation.

However, ALJ Luckern rejected Nokia’s arguments and determined that Nokia cited no ITC cases in support of its assertion that an “early claim construction in this Investigation has the potential to limit and to focus the issues to be addressed in the hearing.”  Indeed, ALJ Luckern explained that “section 337 proceedings differ from district court proceedings” in that “federal district courts conducting Markman hearings do not have a review process within said courts in a district court’s ruling in a Markman hearing.”  Rather, at the ITC, an ALJ’s claim construction determinations are “subject to review by the Commission who can made [sic] new findings of fact based on the generated record.”  (Emphasis in original).  ALJ Luckern further noted that if the Commission disagrees with an ALJ’s claim construction determinations the Commission could “remand the investigation for a decision by the administrative law judge on a claim construction the Commission deems proper” and “[s]uch could affect the target date and result in another evidentiary hearing and hence increase the expenses of a section 337 investigation.”

Regarding Nokia’s arguments concerning the 601 investigation, ALJ Luckern determined that no final initial determination issued in the 601 investigation and Nokia’s accused products were not in issue in the 601 investigation.  Thus, according to ALJ Luckern, “any hearing as requested by Nokia would not terminate all claim construction issues.”

Finally, in the Order, ALJ Luckern noted that “Nokia is correct that this administrative law judge ‘has previously indicated a willingness to conduct a claim construction hearing…if the circumstances warranted,’” however in this case “there have been oppositions [to Nokia’s motion] by complainants and the staff.”  Also, ALJ Luckern determined that “it is unclear what position the Commission would take in the review process if all parties agreed to be bound by any interim Markman ruling by the administrative law judge other than possibly giving some weight to said agreement.”

Although the Order does not completely close the door on Judge Luckern using Markman hearings in future investigations, the Order suggests that he is unlikely to do so.