Markman Hearings and how a Patent Infringement Snowball Becomes an Avalanche

A look inside the Markman Hearing of JuxtaComm versus Ascential Et Al when a patent for data integration scripts grew to cover all data integration software.

A Markman Hearing is held before a patent litigation trial to discuss the meaning of the key terms in a patent. The defence tries to define the terms to push certain products out of scope, the plaintiff tries to keep terms general so they can accuse as many products and functions as possible. The comments shown below are taken from the Markman Hearing transcript for DOCKET NO. 2:07cv359 held on February 4 in Tyler, Texas before judge Leonard Davis.

In this particular Markman Hearing a programming script – usually a set of commands in a text file that gets turned into a program – was defined as any program and the patent snowballed from a narrow set of data integration applications to just about any data integration product on the market.

The day before the Markman Hearing the parties made life easier by agreeing on some terms:

The additional terms that we have reached agreement on last night were "metadata database" and "data bag." And we also reached an agreement concerning the use of the word "component" in construction of two of the claim terms; that being a "rule set processor" and a "script processor," so we have agreed that those mean software components.

One of the problems with the Markman Hearing is that a patent gets deconstructed into little pieces so it no longer resembles a complete product. It’s a bit like getting a patent for a particular type of salad sandwich and then claiming that it covers anything that can be put between two slices of bread. As the defendant legal counsel points out in opening comments:

In this case JuxtaComm is trying to expand the meaning of the claims really beyond anything that is supported in the specification. They entered into a crowded field and right out of the chute in the file history acknowledged that there was art out there that did what they did. And as a result of that, they define some terms very narrowly. Now they want it both ways so that they can apply one construction for infringement in order to get the patent allowed.

The defendants' position is that those terms have very clear meaning in the ordinary course of things to people of ordinary skill in the art at the time that this application was filed. And the plaintiffs' construction, on the other hand, essentially boils it down to any commands executed by any software and we think read those limitations out of the claims.

Which is true – but that’s the way the system works. The never ending quest to protect the inventor means they have the advantage in patent infringement cases such as this.

The main argument in the Markman was around the definition of script. In my blog post from a few months ago Judge Chooses Simplest Claim Construction in a Markman Hearing Shootout it turned out the judge chose a very broad definition of what a “script” was, these are the definitions from the plaintiff, the defendant and what the judge chose:

1. Plaintiff: a group of commands to control data movement into and out of the system, and to control data transformation within the system
2. Defendants: A series of text commands interpretively run by the script processor, such that one command at a time is translated and executed at runtime before the next command is translated and executed, and that control data movement into and out of the system and control data transformation within the system
3. Judge: a group of commands to control data movement into and out of the system, and to control data transformation within the system

The defendants wanted script to be defined as … well .. a script! The judge chose to to define it as any group of commands. That meant any data integration software was in scope in this trial.

the main dispute between the parties and I think where a lot of the argument will focus, obviously, is on the "script" and "script processor" terms and in particular whether those terms require text commands that are interpretively executed. And, secondly, whether those commands are interpreted by the script processor and what that means.

And the plaintiffs' construction, on the other hand, essentially boils it down to any commands executed by any software

We know now that the judge chose the latter – that any application could be considered a “script”. It means that a lot of things that are not scripts get to be described as scripts and the result was extra products being added to the infringement.

The Hearing also covers the reason why the patent, originally rejected by the patent examiner many years ago for being tool similar to an existing patent, got passed after it was amended:

"We distinguish over Morgenstern because Morgenstern doesn't use metadata from a metadata database to control data transformation."

There was a very quick decision from Markman by the judge in the form of a preliminary opinion:

THE COURT: November 9th. I am getting a little behind. It may be six weeks or two months before I can get a formal opinion out. Let me ask you if it would be helpful to the parties for me to get out a preliminary ruling that would not include the full-blown opinion but give you some guidance in working with your experts

At the end of the Markman Hearing the judge talks about the mediation process which picked up speed and lead to more settlements thanks to the avalanche of product scope:

THE COURT: We will try to do that in the next few days then and allow you to move forward. Who is your mediator in this case?
MR. MACON: Jim Knowles is our mediator.
THE COURT: Have y'all had a mediation?
MR. MACON: We had a mediation. We were successful with a number of the defendants. There are still several others who we are still in discussions with.
THE COURT: As far as mediation, defendants have any comment on that? Would another session be helpful, or are y'all talking with the mediator, both sides?
MR. PENSABENE: Your Honor, according to the scheduling order, there is a deadline for a second mediation. The deadline for that is triggered by the decision on claim construction, so I think it would helpful to have clarification as to when that deadline would be, relevant to the intermediate opinion or the formal opinion that the Court --
THE COURT: I would think that you could go ahead and mediate after the preliminary opinion, which you should have, if not by the end of this week by the first part of next week.
MR. MACON: We will be agreeable to that.
THE COURT: Y'all go back, visit with Mr. Knowles, see if you can work out a business solution to your problem. If not, we will see you in November.

So according to this exchange the second remediation is over – having delivered extra vendors including Informatica and Business Objects into the settlement fold, but once it is over we are on the race through to the trial in November.