The first effect of the Markman decision

is, ironically, procedural rather

than substantive. By this I mean that the

timing of such a hearing is critically

important to many patent litigators.

Many defendants urge that the hearing

be conducted early in a case, and without

any discovery. Their strategy is to

keep the plaintiff in a discovery “black

hole,” and get a claim interpretation

that will set up a summary judgment

motion for non-infringement or invalidity,

leading to a quick exit from the case.

On the other hand, plaintiffs often,

though not always, want discovery and

therefore are usually not eager for early

Markman hearings. A summary judgment

motion following a Markman ruling that

precedes discovery is difficult to oppose.

Most courts have decided that a summary

judgment motion granted without providing

the non-moving party an opportunity

for discovery is unfair.

What would I do? Call it chickening

out if you like, but I would refuse to

decide the claim construction issue until

I was at the point were I felt more comfortable

with the technology involved. I

have always speculated that one of the

characteristics of the best district judges

is that they know when they have enough

information in order to make a decision,

and then they decide without further

delay or ado. It is an art, and like Irving

Younger’s comment that Joe DiMaggio

played center field as though God created

him to do that and nothing else, it is

much harder than it looks.

The Markman hearing in this case was

in the context of summary judgment

motions, as envisioned in the Markman

decision. But the hearing was relatively

early on, and during the discovery period.

It was the judge’s first exposure to the

technical aspect of the case. The summary

judgment motions dealt with contributory

infringement and inducement, as well as

direct infringement.

Two errors resulted. First, the court

interpreted claims based on a restriction

requirement, which as we patent gurus

are supposed to know, is a procedure

intended to make examination more efficient

in the Patent Office. To my knowledge,

there are no other cases that use a

response to a restriction requirement, in

the absence of any rejection, to interpret

the claims and limit them. The most

recent statement I am aware of on this

score is Merck & Co., Inc,. v. MylanPharmaceuticals, Inc., 1999 U.S. App.

LEXIS 21395 (Fed. Cir. September 3,

1999), where the restriction requirement

was coupled with a prior art rejection.

Second, the defendant’s summary judgment

motion for no direct infringement

was granted, relying in part on the absence

of evidence that later turned up because

discovery was ongoing. The problem

regarding the restriction requirement

flowed directly from the decision to hold

an early Markman hearing. The Court had

not become familiar with the patents or the

file history, and tried to do too much too

soon. Had the Court not decided to hold a

Markman hearing, the summary judgment

motions might well have been deferred

until discovery was complete and all the

facts were available.

My view is that the claim construction

issues would have been better addressed

in jury instructions, and not before. That

would have given the court the benefit of

hearing testimony, hearing the inventor,

and hearing and seeing the accused products

and processes. The court will likely

have to do it anyway, since the other summary

judgment motions were denied. An

early Markman hearing did not contribute

to, or increase the likelihood of, a correct

decision. In fact, it detracted from it.

As I said earlier, take my words with a

grain, or even two, of salt. But anecdotal

evidence is still evidence, and these

experiences give us at least a glimpse of

how well Markman hearings work in real

life, and whether they produce the benefits

that were envisioned. These two

Markman hearings increased expense.

One of them led to erroneous rulings.

Both posed a considerable burden on the

decision-maker, and enhanced the risk of

error. Early Markman hearings simply

aren’t worth it.