Section 337 Update - Markman Hearings in Section 337 Proceedings

Welcome to the inaugural issue of the Section 337 Update. This newsletter is designed to provide you with practical updates and developments on Section 337 proceedings before the U.S. International Trade Commission.

A Role for Markman Hearings in ITC Section 337 Proceedings

In a relatively new move, Judge Essex of the U.S. International Trade Commission (“ITC”) issued a so-called Markman Order on June 22, 2009, in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661, Order No. 12). The order is available online. A Markman order is a judicial opinion setting forth constructions of disputed patent claim terms.  It derives its name from the opinion in the case of Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), in which the U.S. Supreme Court decided that patent claim construction is a matter of law for a judge to decide, rather than a question of fact which is decided by a jury when a jury trial has been requested. 

In this ITC Section 337 investigation, the Respondents had asked for Markman briefing and a two-day hearing to construe the 37 asserted claims from the nine patents at issue.  According to the Respondents, defined claim terms would “reduce the number of issues presented in expert discovery, the number of issues presented for summary determination, and the number of issues presented at hearing.”  (Inv. No. 337-TA-661, Joint Proposed Procedural Schedule, 4.)  The Complainant disagreed, arguing that a separate Markman procedure would place significant burdens on the court and “likely raise many claim construction issues unrelated to any actual issue in the investigation.”  (Id.)  Resolving all the issues at once would be more streamlined, the Complainant asserted.  The staff of the ITC’s Office of Unfair Import Investigations (“OUII”) sided with the Complainant, stating “that a Markman hearing is not warranted,” nor feasible.  (Id. at 5.) 

Judge Essex agreed to hold a Markman hearing to resolve the large number of asserted claims and to educate the court as to the technology.  (Inv. No. 337-TA-661, Hearing Trans. of Jan. 30, 2009, 7-8.)  He had set aside two days to have a technology tutorial and Markman hearing (id. at 8-9), but only one day was needed (Inv. No. 337-TA-661, Order No. 12, at 2).  Judge Essex considered claim constructions proposed not only by the Complainant and Respondents, but also by the OUII staff.  In all but a few cases, the OUII staff proposed the same claim constructions as the Complainant.  (Inv. No. 337-TA-661, Order No. 12.)  In a 51-page opinion, Judge Essex construed the various claim terms disputed by the parties.  Notably, Judge Essex agreed with the OUII staff’s proposed constructions throughout.   

It is relatively unusual for a judge at the ITC to hold a Markman hearing and issue an order in advance of trial, as distinct from the trend in U.S. federal district courts.  Many district courts, after the Supreme Court’s Markman decision, began to require briefing for and issuing Markman orders construing disputed claim terms in advance of summary judgment proceedings and trial because issues of patent infringement and validity so often turn on the construction of a patent’s claims.  Use of Markman orders thus cut down on the cost of litigation, both because many cases settled following a Markman order, and because the parties themselves did not have to set forth alternative arguments and, in some cases, hire additional experts for infringement and validity issues.

Judges at the ITC had been slow to adopt this practice, given that ITC hearings do not involve a jury who may benefit from the guidance of a Markman order, and given that proceedings under Section 337 occur under very tight deadlines.  It now appears, however, that at least two of the ITC judges will permit Markman proceedings in appropriate cases.

Markman Orders in Section 337 Proceedings

Below please find a list of current ITC Judges, and relevant investigation numbers, where Markman hearings were held.  We have provided a link to the Markman order if it was publicly available at publication time.  

Judge Charles E. Bullock:

• Inv. No. 337-TA-509, Certain Personal Computers, Server Computers, and Components Thereof
• Inv. No. 337-TA-547, Personal Computers, Monitors and Components Thereof
• Inv. No. 337-TA-619, Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same
• Inv. No. 337-TA-621, Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Products Containing Same

Judge Theodore Essex:

• Inv. Nos. 337-TA-608 & 602 (consolidated investigations), Certain Nitrile Gloves and Certain Nitrile Rubber Gloves *Confidential Order Construing Claim Terms filed 3/14/2008 -- Public version not currently available on EDIS.
• Inv. No. 337-TA-661, Semiconductor Chips Having Synchronous Dynamic Random Access

We will periodically provide you updates on developments relating to Section 337 litigation. If you have any questions or for further information, please feel free to contact Charles Schill at 202.429.8162; Alice Kipel at 202.429.6743; or Steve Barber at 202.429.6430.