February 20, 2012 Articles

Inter Partes Review: The New Markman Hearing?

Inter partes review could be a big hit and may even replace Markman hearings as the defining moment in many patent litigations.

By Robert M. Asher

The U.S. Supreme Court did not impose Markman hearings on patent litigation. In the case of Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the court merely held that "claim construction is a matter of law for the judge to decide." District courts have since experimented with a variety of ways of handling patent litigation to give effect to this governing law. Depending on the court, claims have been construed by the judge before trial, after trial, and in the context of summary judgment motions. Over time, claim-construction hearings have become the most widely accepted approach to patent litigation.

The America Invents Act (AIA) may revolutionize patent litigation again through the introduction of inter partes review proceedings. Inter partes review has the promise of a swift contested administrative patent review with estoppel effect in which the proper meaning of claims will be determined. As of September 16, 2012, one may seek inter partes review of any U.S. patent. This new procedure replaces and eliminates the existing inter partes reexamination process. Inter partes reexaminations have suffered from a protracted timetable that discourages district court stays of litigation, and they thus make the prospect of preclusive effect remote.

Premium Content For:
  • Litigation Section
Join - Now