Markman Hearing

Posted Friday, March 9, 2012.

I had the opportunity to attend a Markman Hearing today at the U.S. District Courthouse in downtown Seattle. The Markman Hearing was a portion of an ongoing patent infringement litigation.

A patent infringement case often turns on the meaning of the patent claims in the suit. Patent claims are the legal description of the invention. They are analogous to a legal description associated with a piece of real estate, and set out the “metes and bounds” of the intellectual property being protected by the patent.

The meaning of the terms used in the patent claims is critical in a patent infringement case. The meaning of the claim terms is supposed to be clear from the textual portion of the patent itself, but often the meaning is less than clear, or at least in dispute. Therefore, the exact meaning of the patent claims is often the most contentious issue in a patent case, because if the plaintiff’s meaning of a claim term is given effect, then the plaintiff likely prevails. Conversely, if the defendant’s meaning of a claim term is given effect, then the defendant probably didn’t infringe.

Until recently, claim construction was performed by the jury, meaning the parties presented evidence at trial as to the meaning of the claim terms, the jury settled upon what the claims actually meant, and then based on that finding decided whether infringement had occurred. That changed in 1996, when the U.S. Supreme Court ordered that claim construction be performed by the judge, not the jury. The Court explained:

The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. Patent construction in particular “is a special occupation, requiring, like all others, special training and practice. The judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury; and he is, therefore, more likely to be right, in performing such a duty, than a jury can be expected to be.

Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-389 (1996).

Consequently, in a patent infringement case in which a jury trial has been requested, a pre-trial hearing called a Markman Hearing is usually held. At the Markman Hearing, the parties put forth their proposed construction of the claim terms at issue in the case. The parties conference prior to the Markman Hearing and stipulate to any agreed-upon claim term meanings, so that at the hearing the focus can be on the claim terms in dispute.

Turning to civil procedure for a minute, the Western District of Washington has local rules that apply specifically to patent cases (the “Supplemental Patent Rules”). In addition, several judges in the Federal judiciary have their own rules related to patent cases, in the form of a standing order for patent cases. The rules state that a Markman Hearing is to be held 180 days from the issuance of the case schedule order. That means the parties have 180 days to confer regarding the meaning of the claim terms, and then submit their briefs to the court.

In this hearing, the judge began the proceeding by reminding everyone that what was to come was “the only thing more painful than going to the dentist.” If you can imagine a hearing at which the issue was the precise meaning of the word “using,” for example, one can see this analogy probably has some merit.

It is possible that, depending on the result of the Markman Hearing and meaning of the claim term at issue in the case that there won’t even be a jury trial. Many Markman Hearings are dispositive of the case, because depending on the meaning of the claim terms, there may be no facts remaining for a jury if the claim term gets a narrow construction. Indeed, one of the parties in this case indicated that they intended to present a motion for summary judgment of non-infringement at the close of the Markman Hearing.

It was a good hearing for a patent practitioner to attend. As a patent prosecutor, it is always interesting to see what happens with patents once we get them issued for a client.

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