Preparing for a Markman Hearing - Part I - ABA YLD 101 Practice Series

By Jack L. Hobaugh, Jr.

You have a Markman Hearing on your calendar. How should you prepare for that hearing? Before we get started I must disclose that I have never participated in a Markman hearing as counsel for a party. I am the clerk you see sitting over in the jury box taking notes. I have read your construction briefings and will write the first draft of the construction order after conferring with the Judge. I also prepared the Judge for the hearing with a memorandum. I happen to have a diverse technical background from nuclear physics to software engineering to Voice over Internet Protocol (VoIP) product engineering. But most helpful is the fact that I have been an impartial observer of two recent Markman hearings. What follows are my impressions, lessons learned and suggestions.

The first step in your preparation is to visit your judge's website and look for patent rules. You should have done this as soon as your case was assigned to a judge. Do not assume that just because Judge X in District Y does not use patent rules that Judge Z in the same district does not have patent rules. Our chambers uses a set of patent rules based on the patent rules from the Northern District of California. If I were to look on the web site and did not find a set of patent rules, I would contact the chambers and ask if that particular judge has patent rules. This discussion will follow the structure of my Judge's patent rules. Just keep in mind that other judges' rules might vary.

Ok, I sense that some of you have your hands raised and are asking the question, what do I do if my judge does not have any patent rules. Good question. It is well known that many judges cringe at the thought of a patent case. You might even have a judge that will allow you to submit dispositive motions without first holding a Markman hearing. These judges allow each side to present their own constructions in their motions for summary judgment or other dispositive motion. In my opinion, this is a recipe for a train wreck. Assuming that you agree, and you have drawn one of these judges and are not fond of train wrecks, I would suggest that you file a motion asking for a Markman hearing. Get the other side to stipulate if you can. But do more than just asking for a hearing. Find a good set of patent rules and put a structure that you would like the judge to follow in your motion for a Markman hearing. And include a proposed order. In other words, make it easy for the judge to adopt. Always keep in mind that courts are reactive entities, they react to what you file on the docket. If you do not file something on the docket, then the court may not act. It is just that simple. Most courts have a full docket of cases. Yours is one of hundreds of active cases. And do not call the law clerk asking what you should do. He or she is not allowed to give you legal advice. Next, a few words about why the Markman hearing is so important.

It is common knowledge that most cases do not go to trial - most cases settle before trial. But before the parties settle, they joust a bit through summary judgment motions and motions to dismiss. Throughout this process the parties learn the value of their case and the other side's case. The Markman hearing and resulting claim construction adopted by the court will provide the construction you will be stuck with in submitting your summary judgment brief unless you appeal the construction to the Federal Circuit. If you win the claim construction battle, you increase your chances of winning with summary judgment or surviving summary judgment. Thus, the Markman hearing is a key and potentially dispositive battle that will likely become the keystone of your case going forward. Therefore, start your preparation early.

Following our patent rules, one of the early steps in preparation for the Markman hearing takes place during the initial case management conference. At this conference the parties must decide (1) whether the court should hear live testimony at the Markman hearing and (2) the order of presentation at the Markman hearing. In some cases, the court may have already heard expert testimony during a preliminary injunction hearing. If that is the case, the court may have heard enough expert testimony. Whether expert testimony is needed will also depend on the complexity of the subject matter. If the alleged infringed device is a basic widget, then expert testimony could be a waste of time. And I can guarantee that courts do not suffer lightly events that waste the court's time. Of course, as a good attorney you should not be wasting your clients money. So be prepared for the court to limit the Markman hearing to attorney argument only. But that does not mean that you cannot use your expert's opinion in claim construction. You will have that opportunity in your pre-hearing construction briefs through the use of declarations and deposition testimony.

It is easy to understand why judges do not want expert testimony at the Markman hearing. Expert testimony can be long and drawn out. Many experts are great at what they do technically but are not good at communicating the technology to the lay person or judge. And the judge is your audience at the Markman hearing. When an expert who is spewing out technical jargon is combined with an attorney who cannot seem to ask the proper follow-up questions, the result is an impatient judge that starts asking the questions. That is a sure sign that the judge is not getting the information that the judge needs to do the construction. So when the judge says no experts what the judge is really saying is, "Mr. or Ms. Attorney, I want you to condense down what the expert has to say and present it to the court in a straight-forward non-convoluted manner that the court can understand and use. The next step in our rules is the exchange of proposed terms and claim elements for construction that must occur no later than ten days after service of the Preliminary Invalidity Contentions.

These are the terms that the parties want construed by the court. This also includes those terms governed by paragraph six of 35 U.S.C. § 112 - "means for" or "steps for." After the exchange, the parties are directed to meet in order to finalize the list of terms. Be aware that the court may limit the number of terms to be construed. For example, our court limits that number to ten terms. If you want more than the number provided by the court, my suggestion is to file a motion asking for more. A stipulated motion would be better. The motion should give good solid reasons why ten terms is not enough and again, contain a proposed order. You have probably noticed by now that these patent rules are focused on focusing the parties on the real issues. That reminds me of one of my pet peeves - unfocused attorneys and their accompanying unfocused briefs - more on that later when we get into the discussion of the briefs. Now that we have our list of disputed terms, we can turn to the initial construction of those terms.

Approximately three weeks after the exchange of proposed terms, the parties simultaneously exchange their preliminary claim constructions for each term. At this time, the parties are also directed to provide extrinsic evidence to be used in support of their constructions. Ambushes are frowned upon by the court. After the parties have had a chance to review the exchanged material they should meet again to narrow the issues if possible and to prepare a joint claim construction chart and pre-hearing brief. This joint claim construction chart and pre-hearing brief is then filed on the docket to start the clock for each party's construction brief. This joint effort should also contain a list of terms on which the parties agree. In addition to the proposed constructions, the joint brief should include the identification of the intrinsic and extrinsic evidence that supports/opposes each construction, the anticipated length of the Markman hearing, a list of proposed witnesses, if allowed, and a list of any other issues that the parties deem appropriate for the court to handle during a pre-hearing conference. The court can then use this information to determine if a pre-Markman conference is needed.

Using the joint claim construction chart and brief, the party alleging infringement prepares and files a claim construction brief with arguments to support their construction. This brief should be focused on claim construction. Let me repeat that. This brief should be focused on claim construction. The court does not need to hear about how egregious the other side has been behaving or how outrageous and boldly the infringer has been directly copying the plaintiff's product. This is not the place to argue your case. It is not the place to argue how your proposed claim construction applies to the alleged infringer's device. Also, the focus of your brief should be more on the desired construction versus what you believe should not be included in the construction. I have seen attorneys focus a lot of attention on stating what the claim term does not mean in an effort to head off the other sides argument. But this can be frustrating to someone reading the brief who is trying to construe the term. Save the "it cannot be this" argument for your response brief where it will make more sense. When I am reading your brief I want positive statements using positive evidence why your proposed construction is correct. I want to know why that if my Judge accepts your proposed construction, my Judge will not be overturned by the Federal Circuit. Telling me what the term is not will not help me find the correct construction. This is the place to focus on getting the best claim construction for your client that will help you later win or favorably settle the case. Fortunately for us, the Federal Circuit has provided us with a roadmap in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). I cannot emphasize enough - read, understand and know this case! This is also a good time to discuss one reason why district judges do not enjoy patent cases.

First of all, construing claim terms is not an exact science, and it opens judges up to second guessing by the Federal Circuit. I do not know the actual figure but I have heard that a large number of claim constructions are overturned by the Federal Circuit.   

I will spare you the blow by blow rehash of Phillips as it speaks for itself and it is fairly easy to understand. Phillips also has a wealth of citations to other related cases. Phillips is an enbanc opinion where the Federal Circuit laid down the law on how to construe claim terms. This case was definitely written to give guidance. The district courts will be referring to this case to write your construction order and you should use it to present your argument to the court. Best case is that the court reads your brief and says, hey, this correctly uses Phillips, I can reuse this attorney's work in the order. As you read Phillips, take notice that not only was a district judge's ruling overturned, but also a Federal Circuit panel's ruling. And this was about a simple technology - wall baffles. Claim construction is not easy.

As you read through Phillips, keep in mind that there are two categories of evidence: Intrinsic and Extrinsic. As in contract law, intrinsic evidence is king. Intrinsic evidence includes the specification, claims and file history. The rest is extrinsic. Normally claim and specification intrinsic evidence will outweigh the file history.

After the opening construction briefs by the plaintiff or both parties, each party has the chance to respond to the other party's construction. Again, keep your brief focused and to the point. And after the responses, if the parties still have something worthwhile to add, a reply may be filed. After the proposed constructions are fully briefed, the matter is ripe for the Markman hearing.


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About the Author

Jack Hobaugh, Jr. is an associate in Blank Rome LLP's Washington, D.C. office. Mr. Hobaugh concentrates his practice in the areas of intellectual property and intellectual property litigation, with a background of 25 years in scientific and technical experience in the disciples of telephony, software engineering and nuclear physics. Additionally, Mr. Hobaugh served as a law clerk to the Honorable Chief Judge Tena Campbell of the United States District Court, District of Utah, where he specialized in patent litigation support.

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