The interpretation of the asserted claims frequently is critical to the outcome of a patent dispute. The construction of disputed claim terms often determines whether an accused product infringes the patent and can be pivotal to invalidity defenses. In Markman v.
Westview Instruments, Inc. In Cybor , the Federal Circuit held that it would review district court claim construction rulings de novo , considering the record without deference. The Federal Circuit reaffirmed the Cybor policy in early , when the court ruled to retain the de novo standard based on the principle of stare decisis.
Philips Electronics North Am. Sandoz and other generic drug companies filed Abbreviated New Drug Applications seeking approval to market a generic form of the drug. In response, Teva filed an infringement action under the Hatch Waxman Act. On appeal, the Federal Circuit reversed, ruling that the claims were indefinite. Justice Breyer, writing for the majority, reasoned that Fed.
Breyer noted that although Markman gives the district judge sole responsibility to construe a patent claim, it recognizes that claim construction will require subsidiary factual findings.
Moreover, it predicted that inconsistent claim construction rulings by different trial courts would be infrequent and unlikely to cause uncertainty:. Neither the [Federal] Circuit nor Sandoz, however, has shown that or explained why divergent claim construction stemming from divergent findings of fact on subsidiary matters should occur more than occasionally. And the attorneys will no doubt bring cases construing the same claim to the attention of the trial judge; those prior cases will sometimes be binding because of issue preclusion, see Markman , U.
Moreover, it is always possible to consolidate for discovery different cases that involve construction of the same claims. This wording and the defined definitions from the Markman hearing is what jurists use to determine if patent infringement has occurred. The name "Markman hearing" comes from a Supreme Court case Markman v.
Westview Instruments, which decided that judges were better than juries in determining claim construction. In a patent infringement case , the judge and the jury have very different responsibilities. In a typical jury trial case, the jury is tasked with finding the facts, while the judge's job is to interpret the law. In a Markman hearing, the judge is tasked with claim construction or defining important words in a patent description. Though a judge will help to define terms, he will not decide in a Markman hearing to include or exclude processes or products that are part of the patent infringement.
A jury must decide which processes and products to include and exclude. There are two types of evidence that might be heard in a Markman hearing: intrinsic and extrinsic. This type of evidence is evidence that is related to the case under litigation for patent infringement. Examples of intrinsic evidence in a Markman hearing include:. Correspondence between patent applicant and patent examiner. Both of these pieces of evidence will help to show the thinking of the inventor in why he used the terms that he did and the given definitions of key words.
Any evidence that is used in a claim construction case that isn't related to the patent under litigation is considered outside or extrinsic evidence. Examples of extrinsic evidence in a Markman hearing include:. In Markman v. Westview Instruments , the Supreme Court didn't define a specific process that must be followed to decide claim construction.
Different courts have developed different processes over the years. Some districts decide construction claims early on in the case before the patent infringement is discussed. Other courts will hear all of the evidence presented and then construe the claim and instruct the jury at the end of the case. Subject to the convenience of the Court's calendar, two weeks following submission of the reply brief specified in Patent L.
Not later than twenty-eight 28 days after service of responsive briefs and subject to the convenience of the court's calendar, the court will conduct a Claim Construction Hearing, if the Court believes a hearing is necessary for construction of the claims at issue. The court may also order in its discretion a tutorial hearing, to occur before, or on the date of, the Claim Construction Hearing. Even within one state, there are differences in how and when Markman hearings are held.
To further illustrate this point, this is how Georgia handles Markman hearings. Subject to the convenience of the Court's calendar, the Court shall conduct a Claim Construction Hearing to the extent the Court believes a hearing is necessary for construction of the claims at issue. Every local court has its own rules. If you're facing a Markman hearing in your district, be sure to find out how your court hears cases. As well, if you're facing a patent infringement case, you may want to consult with an experienced patent attorney.
A Markman hearing isn't an easy case to handle, even for experienced patent infringement attorneys. These tips will help you to understand what is needed in a Markman hearing and the steps that your attorney might take when entering a Markman hearing. Judges are people too. They have quirks, faults, and strong suits. Knowing what those qualities are before starting your Markman hearing will make it much easier to try your case.
A major concern for many lawyers is whether or not the judge is versed in patent law. Different terms and explanations will be necessary if the judge isn't experienced in patent law. As well, many patent infringement cases may be about highly technical inventions.
A judge who isn't very tech-savvy may struggle to hear the case and understand. Changing your tactics and communication will make it easier for the judge to understand. A tech tutorial is a presentation with animations and voiceover that explains the invention in question in the Markman hearing. Some Markman hearings require tech tutorials while others do not. As well, each judge has his own way of hearing the tech tutorial.
Some judges like to view the tech tutorial in private, while other may want to watch it live in court and ask questions of the attorneys or experts. If you're an attorney who is new to Markman hearings, a mock Markman hearing could help you to practice your skills and encounter possible situations in which you might find yourself. A practice round might be as theatrical as having someone stand in for the judge and provide responses or just preparing oral arguments ahead of time to practice in the mirror.
For major Markman hearings, you could even request the help of a retired judge to hear your practice round. Practice makes perfect. By the time you reach the courtroom, you shouldn't be using notes to present your case. You should know your argument so well it's practically memorized. Practice is the time to fail, not during the real thing. An expert isn't always necessary in a Markman hearing. Experts will sometimes present during a Markman hearing and sometimes present a report later on in the patent infringement trial.
Working with an expert from the beginning ensures that you're both on the same page and presenting the same argument throughout the patent infringement case. Consistency with your expert is very important. As well, some experts have never participated in a patent litigation case and may be nervous. Prepare the expert to make sure he or she knows what will happen and what is expected during the trial.
Forexample,ifclaimconstructionfavoursthePlaintiff andinfringementisestablished,aseparateproceedingwillonlyhaveslowed downthemaintrialanddelayeddeterminationsofdamages[SeeD. Also,theMarkman proceedinggivesU. FederalCircuitcourtstherighttocarryoutclaim constructiondenovoinanewtrial,thelatterbeingamatteroflawwhich canbeappealed,withare-examinationofproofandexpertwitnesses,thus possibilitysubjectingpartiesunnecessarilytoadditionalproceedings[SeeE.
Additionally,studiesoftheperformanceofAmericanjudgesininfringement casesyieldinterestingresultsthatcanbeusedtoevaluatewhetherthe reasoningoftheCourtinMarkmanthatjudgeswerebetterplacedthanjuries tocarryoutclaimconstructionwascorrect. Otherwise,thepotentialadvantagesofaseparatetrial willbelostinawaveofappeals. TheexperienceofAmericancourtsseemstoshowthattheobjectivessought bytheFederalCourtofCanadainRealsearch,intermsofsavingsoftimeand resourcesbyimplementingaseparatetrial,willnotnecessarilybeeasyto meet.
Itisonlyincaseswhereclaimconstructionresultsinadeterminationof theabsenceofinfringementthattheMarkman-typeproceedingwillsurelybe beneficialtopartiesinCanada. Also,ifthisproceedingbecomesmore commonplaceinCanada,courtswillhavetobepreparedtoacceptand disposeofmoreinterlocutoryjudgementsonclaimconstruction.
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