Judge Pender issued Order No. 19 in Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016, denying Complainant The Chamberlain Group’s (“CGI”) motion for summary determination that the accused products do not infringe one of the asserted patents under the ALJ’s claim construction order.  CGI moved for summary determination in an attempt to obtain interlocutory Commission review of the claim construction order, but the ALJ denied the motion explaining that summary determination cannot be entered against the moving party’s interest.

The Case

The ITC instituted the 1016 Investigation on August 9, 2016 pursuant to a complaint filed by CGI alleging infringement of U.S. Patent Nos. 7,161,319, 7,196,611, and 7,339,336 by various respondents.  On December 19, 2016, the ALJ conducted a Markman hearing, and he issued his order construing the patent terms on January 26, 2017.  In the claim construction order, the ALJ construed the term “wall console” in the ‘319 Patent as “a wall-mounted control unit including a passive infrared detector.”

On February 21, 2017, CGI moved for a “stipulated” initial determination that the importation or sale of the accused articles does not constitute a violation of section 337 under the ALJ’s construction of “wall console” in the ’319 patent.  CGI explained that it does not agree with the construction of “wall console,” but that application of the ALJ’s construction would result in a determination of non-infringement.

Judge Pender denied the motion and explained that, 19 C.F.R. § 210.18, which governs motions for summary determination, only permits a party to move for summary determination “in its favor.”  The ALJ reasoned that “[a] finding of no violation, or no infringement by the accused devices, cannot be considered in the favor of CGI.”

In coming to his decision, the ALJ distinguished Certain Wireless Devices With3G and/or 4G Capabilities And Components Thereof, Inv. No. 337-TA-868 noting that in that case the respondents moved for summary judgment of non-infringement based on a claim construction order.  The ALJ also distinguished Toshiba Corp. v. Juniper Networks, Inc., C.A. No.03-1035-SLR, explaining that a stipulated order in district court “may be an effective and efficient tool but there is no analog for it in this forum.”


According to the ALJ’s decision, despite the efficiencies that would be gained, a party seeking Commission review of an interlocutory claim construction order cannot bring its own motion for summary determination.  Litigants in this situation have few options.  The best may be to request that the opposing party file an unopposed motion for summary determination that could then be reviewed by the Commission.  However, the opposing party might not agree, for instance, if there are multiple patents at issue in the investigation.  A party could also seek interlocutory review by the Commission pursuant to Rule 210.24(b)(1), but the ALJ would have to agree and also find that the ruling involves a controlling question of law or policy—an unlikely outcome for a claim construction order.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.