The ITC investigation '1106 instituted March 29, 2018 has started at a fast pace. On April 5, 2018, within a week of institution, Administrative Law Judge (ALJ) Sandra (Dee) Lord issued order No.3 establishing the timeline for the investigation and setting the date for the final determination at July 29, 2019, just sixteen months after the date of this timeline order.
The compact timeline is not unexpected as this is a common feature of ITC investigations. However, what may be considered mildly unexpected is the determination by ALJ Lord "that a Markman hearing would be beneficial to this investigation, and a Markman hearing shall be held on Thursday, August 30, 2018."
The two previous ITC investigations ('829 & '918) in 2012 and 2014 resulting from complaints filed by Canon and involving the gear assemblies on laser printer cartridges, were both assigned to ALJ Shaw who, in the six-year period between October 25, 2010 and September 20, 2016 did not hold any Markman hearings as part of his assigned investigations, including those of the '829 and '918 matters. ALJ Lord, on the other hand, seems more inclined to conduct Markman hearings as a matter of course in her investigations.
So-called "patent claim construction" must occur with, or without a Markman hearing at some point in any patent-based ITC investigation. Historically, this requirement has been more routinely performed at the evidentiary hearing stage of the investigation, rather than as part of an earlier Markman hearing.
Ultimately, ALJ Lord cannot fulfill her responsibilities to the investigation unless the claims of the patents in the dispute are clearly understood. The Markman hearing is presumably intended to help develop this understanding at an earlier stage of the investigation than would otherwise be accomplished.
Patent claims define the boundaries of an invention and, ideally, should be written so that people "of ordinary skill in the art" are able to understand them. However, the lawyers writing the claims may not be "of ordinary skill" meaning claims, typically, end up written with a blend of technical and ordinary words "mixed with legal jargon". Not surprisingly, this often means the claims are difficult to understand and open to interpretation.
To properly construe (interpret) the patent claims at issue in this investigation, the ALJ will be focusing primarily on the words of each claim and the patent specifications. The investigation will also look closely at the prosecution history of the patents and their claims in order to help construe them. It is the record of correspondence between the patent applicant and the Patent & Trademark Office (PTO) that will help the ALJ decide what each invention is intended to cover and what it's not intended to cover.
The Markman hearing will present an opportunity for the complainant (Canon) to present its case for explaining the claims to the ALJ and for the respondents to present theirs.
So, with this now established in the timeline, the August 30, 2018 Markman hearing could be be an important milestone in the course of the '1106 investigation, second only in importance to the trial itself that's scheduled for late January 2019.
It's possible the outcome of the Markman hearing will provide an indication of whether or not Canon's patents are infringed because the resulting claim construction order will be likely to either lean toward favoring the complainant, or toward favoring the respondents.
Given there's plenty of time (5 months) between the Markman hearing (August 30, 2018) and the trial (January 28, 2019), there will be ample opportunity for the parties to talk so, it's possible, the claim construction order may drive an early resolution of the investigation. However, we imagine any initiative to discuss resolution will be motivated by how clearly the claim construction order leans in one direction or the other.
The Markman hearing is limited to dealing with the construction of the claim language and not whether the claims are valid. Instead, validity will be the subject of expert testimony and of legal briefings at the hearing stage (January 2019).
It will be at these later stages of the investigation that Canon will be seeking to convince ALJ Lord that:
"..... the 1106 patent claims, which describe a dongle gear that doesn’t dongle (i.e., doesn’t move out of the longitudinal axis of the drum), have sufficient written support in the specification of the ‘278 patent, the parent patent on which the continuation patents are based, which described a dongle gear that does dongle."
https://blog.eandssolutions.com/blog/canon-the-non-dongle-dongle-gear-dispute-and-the-itc"If the language of the ‘278 specification is not sufficiently broad to describe a non-dongling dongle gear, then the respondents will have a strong case that the asserted claims are invalid."
The ITC Investigation Timeline and Key Events
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About the author:
Ian Elliott has over 35 years experience in the imaging supplies industry and, at prior places of employment, has faced direct involvement in OEM versus aftermarket patent litigation. Mr. Elliott is not a patent attorney, is not qualified to provide legal advice, and this article is not an attempt to provide any kind of legal advice. It represents no more than his views and opinions based on decades of relevant experience.
Correction issued April 16, 2018 to deal with an error in original publication that the Markman hearing would consider claim construction and validity. The Markman hearing is limited to claim construction with regards to potential infringement, not validity or invalidity of the patents in the investigation. This will come later, in the January 2019 time frame with expert testimony and briefings.