A 'Markman' Hearing Can Determine Case Outcome:
It Is Prudent To Have A Litigator Experienced In
Drafting Claims And Getting Them Through PTO

Floyd R. Nation
Steven Z. Szczepanski
Howrey LLP
Houston, Texas
(713) 787-1661

Claim construction proceedings are becoming increasingly determinative in patent litigation. This is a direct consequence of recent developments in the underlying approach to claim construction.

A patent's claims—the series of single-sentence statements that follow the descriptive portion of the patent—define the metes and bounds of the patentee's property rights.1 A determination of whether a patentee's rights have been violated by an accused infringer depends on whether the accused product or process falls within the claims of the patent. Similarly, to determine whether a patent is invalid in light of prior art asserted by an accused infringer, one must compare the claims to the prior art.

An early endeavor of the U.S. Court of Appeals for the Federal Circuit was to divide infringement analysis into two steps. The first determines the proper interpretation and scope of the claim language;2 the second compares the properly construed claim language with the alleged infringing device or process to determine whether the former encompasses the latter. This second step always has been a factual determination to be made by the trier of fact—a jury, if one is requested.3

Who decides the first question—the meaning and scope of the claims—was less clear. The Federal Circuit's opinions contained "inconsistent statements as to whether and to what extent claim construction is a legal or a factual issue, or a mixed issue."4 In Markman v. Westview Instruments Inc., the Federal Circuit ruled that the issue of claim construction is a question of law to be decided solely by the judge: "We therefore settle inconsistencies in our precedent and hold that in a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim."5

The Supreme Court affirmed,6 ruling that "the construction of a patent, including terms of art within the claims, is exclusively within the province of the court."7

Because construed claims determine the critical issues in patent suits, lower courts had to determine how best to implement the holding in Markman. Since Markman, the U.S. district courts have sought the best timing and best procedure for determining claim construction.8

In Elf Atochem North America Inc. v. Libbey-Owens-Ford Co. Inc., the U.S. district court in Wilmington, Del., identified three options: "The court can attempt to resolve these disputes on the paper record. Second, the court can hold a trial to resolve the disputes. Finally, the court can wait until trial and attempt to resolve claim disputes the evening before the jury must be instructed."9

The district court ordered a two-day bench trial to determine the meaning of the disputed claims. During the bench trial, it heard from both parties and their experts, and then it issued a decision on construction of the claim language. Thus, the Elf Atochem court often is cited as the first to hold what became known as a "Markman hearing."

To introduce a uniform approach to claim construction procedures, some district courts have adopted local rules. The Northern District of California is an example.10 Similar rules are pending in other districts, including the Northern District of Illinois.

Some courts make available to the parties panels of patent experts for claim construction. In the Northern District of Illinois, the parties can agree to submit the claim interpretation issue to an expert or a panel of experts, which holds a hearing and submits the recommended claim construction to the court.

In Markman and a series of post-Markman decisions, the Federal Circuit has delineated the acceptable approach to claim construction and the evidence that may be relied upon and/or considered by the court. To determine the meaning of claims, one first must look at the words of the claim, which generally are given their ordinary meaning.11

To further determine the scope and meaning of a claim, the court should consider the specification, drawings, other claims and prosecution history of the patent.12 Other Federal Circuit decisions have defined the extent to which extrinsic evidence and expert testimony can be used in determining claim construction.

In their analyses, courts use canons of construction that have evolved over nearly 200 years of patent jurisprudence. Some of these are similar to rules of contract construction.

For example, like a contract, a patent claim should be construed so as to give meaning to all its words. Also like a contract, if a claim can be interpreted in two ways, one that makes the claim valid and another that renders it invalid, the validating interpretation should be adopted.13

Other rules of construction are aimed specifically at patents. For example, a claim differentiation canon requires an interpretation that avoids one claim to be read to mean the same thing as another claim in the patent. This canon is based on a presumption that differences between claims of a patent are significant, and it precludes a construction that limits a broader claim to what is claimed in a narrower one.14

In theory, claim construction should be determined without regard to the accused product or process. In practice, however, the accused product or process affects the terms to be construed in a particular case, as well as the parties' positions regarding claim construction.

Whenever possible, the patentee will offer a construction resulting in a claim that literally covers the accused product or process.15 If such a "literal infringement" construction cannot be presented, the patentee will argue for a claim construction that results in infringement under the doctrine of equivalents. Conversely, the accused infringer will offer a claim construction that avoids literal infringement and, if possible, one that causes claimed elements or process steps to be absent from the accused device or process, so as to preclude the application of the doctrine of equivalents.

A court ruling adopting one party's asserted claim construction may largely or entirely determine the outcome of the case. For example, a court's adoption of a construction under which the accused product or process does not include one of the claim elements likely will be followed by the accused infringer's successful motion for summary judgment. Even if the party prevailing on claim construction cannot win summary judgment, the court's adoption of its construction significantly increases its chances of a favorable jury verdict.

The skills needed to prepare and present a case for a Markman hearing are significantly different from those required for a jury presentation. Accordingly, it is helpful to select a patent litigator with experience in drafting claims, in getting those claims through the Patent Office and in oral presentations explaining and advocating patent claims, such as before the Patent Office Board of Appeals.

Preparation for a Markman hearing should be as extensive as for a trial, particularly if the hearing is conducted early in the case, while discovery is ongoing. The client must be advised of the hearing's critical role in the outcome of the suit and the need to provide the resources needed to make the presentation persuasive.

Counsel must divert attention from discovery and treat the Markman hearing as it would the jury trial. Indeed, the Markman hearing often eliminates the need for a jury trial.

(This article is reprinted with permission from the May 24, 1999 edition of The National Law Journal. © 1999 NLP IP Company. http://www.lawnewsnetwork.com/)