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

By Jack L. Hobaugh, Jr.

Ok, so you have written the briefs, prepared hand-outs and have your oral argument all ready to go for the Markman hearing. You have been on this case for two years. You know it inside and out. You have no problems conversing about all the technical details with your expert. But have you mooted your oral argument? If not, go down the hall and find someone, go into a conference room and give them the spiel you plan on giving the judge. I am not talking about a million dollar mooting effort here, just a sounding board operation. The problem is that you have gotten too close to the case, you now understand the lingo. You need to find out if someone not as close to the case will understand your lingo. If not, there is a good chance you will not communicate very well with the judge. Remember in law school when they told us we should write our answers to test questions as if we were explaining the answer to our mother? Well, this is along those same lines. Assume that you will be talking to a non-technical person, a extremely intelligent person, but nonetheless, a non-technical person. A quick moot of your presentation will tell you where you need to not use acronyms and technical jargon, where you will need to back up and explain in more detail, where a picture might help. Yes, it will be slightly easier with the judge because the judge will have read your briefs.

By the time of the Markman hearing, both sides will have fully briefed their positions and the court will have prepared by reading those briefs. The court may start the Markman hearing by explaining its understanding at this point in time and asking for general argument, or by asking the attorneys to focus on a specific area or issue that needs clarification. This is your chance to clarify and highlight to the court why your construction should win over the other side’s construction. But this is not just about speaking and sounding good, it is also about listening. Listen closely to the questions and statements of the court. If the court asks about A, lead with a discussion of A, do not start with a discussion of B. Directly address the questions of the court, do not dance around them. In the instant where you do not know the answer, ask the court for leave to research and brief. If you see that the court has adopted a position that is not good for your client, then this is the time for gentle persuasion. Arrive prepared for all scenarios.

Being prepared means thoroughly knowing and understanding the file history, the claims, the specification and the drawings. Bring a copy of the file history. Also, check the latest cases from the Federal Circuit. If the other side brings up a new case that they believe is in their favor you will need to be prepared to distinguish that case. Of course, if you are caught off guard by the case, admit that to the court and ask for a chance to review the case and brief your position. I also strongly suggest bringing some hand-outs for the judge and clerk. The hand-outs should contain the information that you want the court to focus on. It should not be voluminous. This goes back to my Information Technology ("IT") consulting days when I was traveling all over the world implementing IT systems. I was communicating in different languages and different cultures. A power point slide presentation was a great way to communicate with my clients. And if they walked away emotionally attached to two or three of my power point slides tightly clasped in their hand, I was a happy camper. I knew that they would continue to refer to those slides in their decision making. Decisions whether to accept my implementation proposal and award us their project. You want the same from the judge. You want to give the judge and clerk something they will take back to the chambers and continue to look at during the drafting of the construction order. Again, as with your brief, keep this document short and focused. It can be charts, graphs, drawings, or even blow-ups of the essential parts of the patent or file history.

Finally, you are in front of the judge. Take your cue from the judge. Again, if the judge wants to talk about x, talk about x. Be prepared to talk about your terms and issues in any order. An old trick I use for appellate arguments might help. I assign a card type to each issue: diamonds, spades, hearts, clubs. That way I do not think of my arguments as having to follow any particular order. I just go with whatever suit the judge wants to lead with. In the event the judge wants you to play the first card, I mean start the argument without direction, give the judge a quick roadmap, and then dive in.

Diving in does not mean at the speed of light. Go slow enough for the judge and court reporter to follow you. If you are referring to documents and pages, pause to let the judge find that document and page. This is not a race. Always give the judge the document number and page number.

Some file histories can be fairly large. If you go into the file history, it is likely that you will be touching on many different pages and communications within that file history. If so, do not forget to provide a summary of what you just covered at the end and tie it all together. Tell the judge why the sections you just pointed out are important. Do not expect the judge to put your puzzle together just because you gave the judge all the pieces. Paint the total picture after you have collected all the pieces from the file history. This may seem obvious but I have seen an attorney jump from Patent Office communication to Patent Office communication within the file history and then not tie it together at the end. Just as you must apply the facts to the law in a good brief to make your point you must tie together the disjointed pieces of the file history to make your point. This is another excellent place for mooting before presenting.

I have two final thoughts based on watching Markman hearings that were not a good fit for any of the paragraphs above: (1) if you talk about an amended claim when going through the file history, be sure to point out how the current claim is different from the claim you are referring to in the file history. And give the judge a moment to make the comparison, and (2) do not read the court its own order for the sake of getting it into the record. Yes, I have seen this happen. Hey, it is an order. It is already part of the record.

In summary, most of the heavy lifting has already been done before you enter the courtroom for your Markman hearing. If you have taken the steps outlined above to prepare, the actual Markman hearing should just be a friendly and non-stressful discussion between you and the judge.

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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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