There are no general ITC rules regarding the procedure for how an Administrative Law Judge (ALJ) is to construe claims and, therefore, claim construction is ALJ specific.  Historically, claim construction testimony and evidence in section 337 investigations has been presented during the evidentiary hearing along with other arguments, including, e.g., infringement and invalidity and, thus, there was no separate Markman hearing and no separate ruling.  In this respect, the parties to an investigation typically received the ALJ’s claim construction of disputed terms for the first time as part of the ALJ’s Initial Determination (ID).  More recently, certain ALJs have conducted Markman hearings prior to the evidentiary hearing.  In investigations where a Markman hearing is held, there is no requirement that the ALJ provide a separate claim construction ruling prior to the issuance of the ID.  Since the ALJ issues the ID after the evidentiary hearing (absent special circumstances), the parties are often forced to make arguments based on the competing claim constructions asserted by the other parties so as not to waive any arguments.  However, ALJ Essex recently issued an Order that construed disputed claim terms prior to an evidentiary hearing in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661) (for more on this matter, see our June 29 post).

How a given ALJ handles claim construction can be discerned by examining each ALJ’s recently issued ground rules.  The Ground Rules of ALJs Rogers, Bullock, and Essex specifically address claim construction in a provision entitled “Markman Hearing on Claim Construction.”  This provision provides a general outline and structure of the procedural schedule surrounding a Markman hearing if the ALJ determines that a Markman hearing would be beneficial to the investigation.

ALJ Rogers’ Ground Rules, under the heading “Procedural Schedule,” also sets specific dates for the parties to exchange disputed claim terms, exchange proposed constructions, and submit a joint claim construction list.  Similarly, ALJ Gildea also sets specific dates regarding disputed claim terms under the heading “Procedural Schedule,” but does not contain a specific rule regarding a Markman hearing.  In place of a Markman provision in ALJ Gildea’s Ground Rules, he has included, in the Order setting forth his Ground Rules, that the parties may submit comments as to whether a separate Markman hearing would be useful.

The Ground Rules of ALJ Charneski and Chief ALJ Luckern do not include any provision specifically addressing the exchange of disputed claim terms, claim constructions, or a Markman hearing.  However, Chief ALJ Luckern does suggest in his Ground Rules that, in connection with pre-hearing statements, each party should be able to establish a position on claim interpretation prior to the evidentiary hearing.

Ultimately, the manner in which claim construction is performed in an ITC investigation will depend upon the ALJ who is assigned the case.  Thus, it is important for prospective section 337 litigants to be familiar with the claim construction procedures of each ALJ.

* Mark Tison is a summer associate at Oblon Spivak