March 17, 2000

Published in the San Francisco Daily Journal, March 17, 2000. Daily Journal Corp. Reprinted with permission.

The Supreme Court`s landmark decision in Markman v. Westview Instruments, Inc. 116 S.Ct. 1384 (1996) has dramatically transformed patent litigation in the United States. Essentially, the Supreme Court held that the interpretation of patent claims is now an issue of law for a trial judge, not a jury, to decide. Patent claims, found at the end of the patent document, determine the scope of patent protection. This Markman decision has had profound implications on the practical and strategic considerations for litigating a patent infringement action.

Around the country, federal district courts are implementing their claim interpretation responsibilities in different ways, resulting in a varied assortment of new procedures and rules. Many jurisdictions, including the Northern District of California, have implemented a new set of procedures, culminating in a hearing that is commonly referred to as a ``Markman`` hearing. In some jurisdictions, a judge can appoint a personal advisor or ``special master`` to either address technical concerns or take a first cut at making the claim interpretations.

While the form, timing and scope of ``Markman`` hearings vary from district to district and from judge to judge, the outcome is often dispositive of the entire case. This occurs because the interpretation of a patent claim, or ``claim construction``, is the central issue in most patent litigation. Whether the litigation focuses on patent infringement or validity, the core issue is often whether there is a narrow or broad interpretation of the patent claim.

Typically, after a ``Markman`` hearing, the successful party will file a motion for summary judgment on patent infringement and/or validity, which is granted with increasing frequency. Accordingly, the importance of the ``Markman`` hearing in patent litigation cases cannot be overstated.

The Northern District of California local rules mandate sequential disclosures of information, which precede the ``Markman`` hearing. The good news is that the disclosure timeline is relatively brief, resulting in streamlined legal theories and swift resolution of disputes. Of course, the bad news is that the disclosure timeline is relatively brief, resulting in accelerated investigation and discovery, and sometimes, at least arguably, a rush to judgment.

The following is a hypothetical illustration, which incorporates a general overview of the Northern District of California`s procedural process as well as some strategic considerations. While this is no substitute for consulting the local rules, it should provide an appreciation of the fast-track nature of local patent litigation post-Markman (See Northern District of California Civil Local Rules 16-7 et seq.)

Consider hypothetical patent owner, let`s call them ``Swish,`` owns a patent for an inflated bladder used in the heel of an athletic shoe. The bladder is filled with a heavy gas such as freon, an environmentally controversial gas commonly used in refrigerators and cars, and is marketed by Swish under the misdescriptive trade name ``Air.`` Sales are brisk, especially with the endorsement of an NBA superstar.

A knock-off competitor, let`s call them ``Knocky,`` produces a new athletic shoe with an inflated bladder which is actually filled with air (i.e., taking Swish`s marketing campaign a little too literally). Swish sees a sharp decline in sales as a direct result of Knocky`s competing product, which Swish believes to infringe its patent.

At this stage, it is critical that Swish work as expeditiously and thoroughly as possible to obtain and analyze all sources of information that exist regarding Knocky`s product. Knocky`s website is a potent source of data that should not be overlooked.

Swish then files a complaint alleging patent infringement and Knocky answers by denying both patent infringement and patent validity. Within 45 days of filing their Complaint, Swish must serve an ``Initial Disclosure of Asserted Claims``, which will identify the accused product as specifically as possible, including all make and model numbers of Knocky`s accused athletic shoes. Swish will also need to produce their invention conception documents to Knocky.

Within 55 days of Swish`s ``Initial Disclosure of Asserted Claims,`` Knocky must respond with an ``Initial Disclosure of Prior Art``. In this response, Knocky might identify athletic shoes containing a bladder heel filled with helium that existed prior to the filing date of Swish`s patent. The identification of prior art must be as specific as possible, including the patent number, country of origin and date of issue.

With respect to timing, your might notice that Knocky has only one hundred days from service of the Complaint to retain counsel, perform their investigation and prepare their defense. Crafty counsel for Swish will minimize the time between filing their Complaint and serving their ``Initial Disclosure of Asserted Claims,`` thereby increasing the time pressure on Knocky.

Within 70 days after receiving Knocky`s prior art disclosure, Swish must respond by producing a ``Proposed Claim Construction Statement`` and a ``Claim Chart``. The ``Proposed Claim Construction Statement`` addresses how the claims should be interpreted and the ``Claims Chart`` describes how the claims, so interpreted, should be applied to Knocky`s accused shoes to find infringement. In these documents, it is important that Swish carefully describes the scope of its patent claims. For example, Swish might allege that their patent claims cover a bladder inflated with any type of gas. However, if Swish tries to be too broad in their description, they may inadvertently include a description of prior art (e.g., a bladder filled with helium), which would seriously undermine the validity of their patent.

Conversely, Swish should not be too narrow in their description. For example, if Swish limited their description of the claimed gas to freon, then Swish would seriously undermine their infringement case (i.e. Knocky`s air filled bladder would not infringe). Therefore, the more Swish knows about the gas used in Knocky`s inflated bladder, the better Swish can walk the tightrope in prosecuting their case.

Within 60 days after Swish`s ``Proposed Claim Construction Statement`` and ``Claims Chart,`` Knocky must serve Knocky`s ``Responsive`` claim construction statement and claims chart. Knocky`s responses must set forth the basis for Knocky`s competing interpretation of the claims at issue and, as so interpreted, how such claims apply to Knocky`s prior art. Moreover, it there has been an allegation of willful infringement by Swish, Knocky must state whether they will be relying upon ``advice of counsel`` as a defense. A finding of willful infringement against Knocky may result in treble damages.

It should be noted that amendments to these pre-``Markman`` hearing documents are not favored, and are allowed only by stipulation of all parties or by order of the court. The court will allow an amendment ``only upon a showing of excusable subsequent discovery of new information or clearly excusable neglect.``

Within 21 days of service of Knocky`s response documents, the parties must ``meet and confer`` for the purpose of preparing a ``Joint Claim Construction Statement``, which must be filed within 15 days of the meeting. Essentially, the parties will narrow the claim interpretation issues at this time, setting forth the construction of those claims and terms upon which they agree and disagree. Proposed claim construction witnesses must also be identified.

Within 30 days of filing the ``Joint Claim Construction Statement,`` the court will issue notice of a date for the ``Markman`` hearing. Swish will need to file and serve its opening brief and supporting evidence not less than 35 days before the ``Markman`` hearing, Knocky`s responsive brief and supporting evidence must be filed and served not less than 21 days before the hearing, and Swish can then reply not less than 14 days before the hearing.

Therefore, completion of nearly all patent investigation, research, discovery, expert consultation, and development of strategy as well as the drafting and exchange of ``Markman`` documentation, pleadings and briefs generally occurs in less that one year from the date of the initial Complaint.

To assist district courts, such as the Northern District of California, in the ``Markman`` process, the U.S. Court of Appeals for the Federal Circuit, which hears all appeals in patent cases, provided a primer on interpreting patent claims in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir. 1996).

The Vitronics court held that so-called ``intrinsic`` evidence from the patent documents themselves is favored, such as the plain meaning of claim language as well as the definitions derived from the patent specification and file history. By contrast so-called ``extrinsic`` evidence is disfavored in patent claim construction, thereby severely limiting use of evidence such as inventor and expert testimony, as well as the use of technical dictionaries or other reference materials. This type of ``extrinsic`` evidence may only be allowed in situations where inherent ambiguities exist from the ``intrinsic`` evidence.

Because of the reduced role of experts in the claim construction process, the patent litigator is well advised to incorporate visual aids and utilize demonstrative evidence to ensure that the judge can properly understand the arguments and accurately interpret the evidence.

There can be no doubt that the Markman case has dramatically transformed patent litigation in the United States. The new procedural processes certainly have an effect on the substantive issues, although it is too soon to measure or predict the ultimate impact on the quality of claim construction. The successful patent litigator will need to adapt to the new efficiency of the judicial process, and develop innovative strategies and techniques to gain an advantage. Most importantly, clients must be educated to anticipate litigation demands and to be prepared to move forward with all deliberate speed

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