Possible Timings for Claim Construction

¶ 25 District courts have broad discretion to decide when to conduct Markman hearings and issue orders defining the claim terms at issue.42 Despite this broad discretion, in practice, the district courts typically conduct claim construction at one of four time periods.43 First, a judge may conduct a claim construction hearing before any discovery occurs, presumably shortly after parties exchange the complaint and answer.44 Second, the court could hold the hearing at some point during discovery. Options for in-discovery claim construction include, early in discovery, at the conclusion of fact discovery but before expert discovery, or after expert discovery.45

¶ 26 The Northern District of California and the District of Delaware, where claim construction begins soon after parties have exchanged 26(a)(1) disclosures, advocates early discovery claim construction, as does this comment.46 A third option for the court is to conduct claim construction after the conclusion of all discovery, generally at the same time that motions for summary judgment are placed before the court.47 The court's final option is to determine claim construction at trial, typically after the trial has been completed but before the judge instructs the jury.48

¶ 27 When analyzing its annual Markman Survey, the Intellectual Property Section of the American Bar Association repeatedly finds that most courts consider claim construction after the close of discovery.49 However such findings must be considered in light of the fact that 83% of the district courts surveyed allowed extrinsic evidence to be admitted during the Markman hearing.50 The value of extrinsic evidence has thus been lessened in the post-Phillips world.