By: Levent Hergüner and Ryan McCrum – In an order recently made public, Chief Administrative Law Judge (“ALJ”) Bullock denied Respondent Hitachi Koki USA, Limited’s motion for summary determination of non-infringement because the motion was based on an incorrect interpretation of his claim construction.  See Certain Gas Spring Nailer Products and Components Thereof, Inv. No. 337-TA-1082, Order 19.  Based on a dispute between the parties as to the meaning of the claim term “on,” ALJ Bullock revisited his claim construction to clarify what he meant.

During claim construction, the claim term “lifter member”  was construed as a “rotatable component having lifting pins on its face surface.”  Complainant Kyocera Senco Brands Inc. contended the Respondent’s interpretation of this construction was incorrect because it prohibited lifting pins that extend through a hole on the face surface.  ALJ Bullock noted that, pursuant to 19 C.F.R. § 210.1 8(b), summary determination is appropriate “when there is no genuine issue as to any material fact and the moving party is entitled to a determination as a matter of law.”  He added that in this case, “parties’ dispute can be resolved by settling a legal issue – specifically, the meaning of the word ‘on’ in the construction of ‘lifter member.’”

ALJ Bullock agreed with Complainant that he had not specified what was meant by “on” in the construction.  He highlighted that the Markman Order focused on the distinction between when a lifter member makes contact with the driver member at its face surface versus the outer perimeter.  But he felt a clear reading of his claim construction reflected that “on” was meant to include “extend from.”  He noted that the specification “describes the prior art in a manner that reinforces that the pins extend from the face surface of the lifting member.”  He also agreed with Complainant that the construction of “lifter member” includes an embodiment in which the pin extends through the flange of the lifter.  To support his position, ALJ Bullock cited the below image, which he had previously characterized as depicting a lifter member with lifting pins on its face surface.

He stated that the figure showed all of the pins 104, 106, and 108 extending through the flange of the lifter 100, and that Respondent’s interpretation of “lifter member” would incorrectly exclude this preferred Embodiment.

As a result, ALJ Bullock concluded that “on its face surface” includes “extend from” and “extend through,” and denied Respondent’s motion for summary determination of non-infringement as premised on an incorrect understanding of the construction.


ALJ Bullock’s order reflects the reality that in some instances, claim construction may leave certain questions unanswered and it may be necessary for the ITC to clarify a party’s understanding of the order.  While a summary determination motion is one strategy for addressing a dispute over the understanding of a construed claim term, parties should also consider whether other strategies for seeking clarification of the ALJ’s claim construction may be appropriate in the circumstances.  Parties should also consider the benefit of involving the Office of Unfair Import Investigations (“OUII”) when they are named as a party to the investigation.

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Ryan McCrum, who co-chairs the Firm's intellectual property ITC practice, has nearly 20 years of experience handling high-stakes patent litigation. He has led teams from the initial filing of a complaint all the way through jury and bench trials. He has extensive experience examining witnesses of all types at trial, arguing claim construction and summary judgment hearings, and handling matters through appeal.