Making Claim Construction Count at the ITC

While claim construction can decide patent disputes, parties in US International Trade Commission Section 337 investigations should not rely on it to provide early case resolution. At the ITC, claim construction rulings often arrive near or even after the evidentiary hearing, missing the window to significantly narrow the disputed issues before trial in the same manner as district court.

In addition to focusing on securing favorable constructions, litigants should utilize the ITC Markman process to teach the technology, frame the dispute for the administrative law judge, and position the case for a favorable decision.

CLAIM CONSTRUCTION MAY NOT PROVIDE AN EARLY OFF-RAMP

Section 337 investigations before the US International Trade Commission (ITC or Commission) are mandated by statute to proceed expeditiously. The assigned administrative law judge (ALJ) sets a target date early in the investigation, but the Commission’s rules do not impose a universal claim construction procedure or deadline.[1]

The timing and form of the Markman process therefore depend on the ALJ’s ground rules, the procedural schedule, and the facts and circumstances of a given investigation.

In district court—where claim construction rulings often precede trial by months or years—the Markman process can often provide a potential early off-ramp and significant cost savings to the parties. A construction favoring either party can sometimes support summary judgment, narrow discovery, or materially change settlement leverage before the parties incur the full cost of trial preparation.

That cost-saving premise is less dependable at the fast-moving ITC. In a sample of approximately 25 recent ITC claim construction orders reviewed by the authors, more than 40% issued during the four weeks preceding the evidentiary hearing, and another 20% did not issue until after the hearing.

This means fact and expert discovery may be complete, expert depositions may have occurred, and prehearing preparation may be well underway by the time a party receives a ruling on a potentially dispositive construction issue. It is also likely that the claim construction ruling will come too late to inform dispositive motions; at the ITC, summary determination motions must be filed at least 60 days before the hearing.[2]

This timing does not make claim construction less important but simply changes the objective. Parties should treat Markman not only as a possible dispositive event but also as an opportunity to shape how the ALJ understands the technology and the case.

USE CLAIM CONSTRUCTION TO TEACH THE TECHNOLOGY

Claim construction may be the first opportunity to present a coherent technical narrative to the ALJ. A persuasive presentation should explain not only what a disputed term means but also why the dispute matters to the architecture, sequence, or operation of the accused products.

Parties can develop persuasive narratives in various ways, such as:

• Starting with the system, not the dictionary. A simple architecture diagram or process flow can give the claim language a concrete setting before the analysis turns to the intrinsic evidence.
• Identifying the factual fork. Show how the competing constructions correspond to different understandings of what the technology does and where the parties’ dispute truly lies.
• Developing reusable vocabulary and visuals to support a theme. The clearest explanation at Markman can become the framework for expert reports, witness examinations, prehearing briefs, and hearing demonstratives and testimony.
• Explaining the consequences without trying the entire case. Identify which infringement, invalidity, or domestic industry questions the construction will resolve, or simplify the parties’ dispute.

Importantly, a party should resist the urge to dispute every word in the claims. Most ALJs impose a cap on the number of terms that they will construe,[3] and parties should treat the cap as a limit, not a target. A long list of marginal terms can dilute the presentation and obscure the constructions that define the case.

EVALUATE ALL TECHNICAL ISSUES IN A SECTION 337 INVESTIGATION

As in district court, claim construction at the ITC rarely affects infringement alone. In both jurisdictions, the same term may determine whether the accused products meet a limitation and whether prior art anticipates or renders the claim obvious. But with Section 337 investigations, the complainant’s need to satisfy the technical prong of the domestic industry requirement (i.e., to show that its or its licensee’s domestic industry products practice at least one claim of each asserted patent) gives claim construction even more importance.

Before committing to a proposed construction, counsel should map its consequences across each of those tracks. A broad construction may assist an infringement theory but create additional prior art risk. A narrow construction may support noninfringement but make the domestic industry showing more difficult.

The strategic question is not simply which wording is most favorable on one claim chart but which construction produces the strongest and most coherent overall position.

BUILD A RECORD THAT CAN ABSORB A LATE RULING

Because there is a substantial chance that a claim construction order will arrive after expert reports—or even after the hearing—litigants should develop a record that can accommodate reasonable alternative constructions. Subject to the ALJ’s ground rules and disclosure limits, technical witnesses should be questioned in a way that preserves the relevant facts under both sides’ proposals, and experts should address material alternative constructions where permitted, rather than assume the order will arrive first.

The same approach should carry through the parties’ contentions, prehearing submissions, and hearing preparations. Modular claim charts and demonstratives can be updated more readily after a late ruling, while factual stipulations or admissions should not depend on a construction that has not yet issued.

These alternative analyses should remain focused. The purpose is to prevent prejudice from a late ruling, not to create an unlimited set of fallback positions.

KEY TAKEAWAYS

• Do not budget the case on the assumption that a dispositive construction will arrive before fact or expert discovery is complete.
• Use claim construction to teach the ALJ about the technology, develop themes, establish the case vocabulary, and frame the decisive factual disputes.
• Test every proposed construction across not one, not two, but three areas: infringement, the technical prong of domestic industry, and invalidity.
• Preserve focused alternative analyses in contentions and expert reports so the case can adapt to a ruling issued late in the schedule.

In fast-paced ITC Section 337 investigations, the value of claim construction often extends beyond securing a preferred definition well in advance of trial. The strongest Markman strategy involves giving the ALJ an opportunity to understand the technology and the parties’ disputes and organizing the evidence around the questions that will decide the investigation—even if the claim construction order comes too late to save the time and expense of a trial.