As presented above and as adopted by the U.S. District Court for the
Markman
hearings is before trial and after a limited discovery period. A limited
discovery period should last between five to six months. Although five to
six months may seem to be a shortened period of time in relation to some
of the year long discovery proceedings that currently exist in patent
infringement cases throughout the various jurisdictions, it should be
enough time to gather sufficient evidence in support of a particular
construction of the claims. A five to six month limit on discovery should
also effectively limit parties from stacking the testimony of numerous
experts with similar qualifications who will counter the opposing experts.
One major reason for limiting discovery time and providing a fast claim
interpretation hearing is to open the door to the patent litigation process to
the small inventor. For example, the patent holder that is not a multimillion
dollar company with an unlimited source of funds to pay legal fees.
This is not to say that the door to the courts is closed to the small inventor,
but rather, they are tough to access. Suppose an individual invents a device
and eventually, after taking out small business loans, obtains a patent on
the device. After obtaining the patent, suppose this individual approaches
a large corporation with the patent grant and offers to license the invention
to the large corporation. The large corporation is quite interested in the
device, but decides to infringe the patent grant instead of paying for the
license. The large corporation does this partly because they are aware that
it will be very difficult and costly for the individual to enforce the patent
against the large corporation. The corporation has a large legal department
that can mount a defense to an infringement action, countersue for patent
invalidity, or simply drag the case out until the individual can no longer
224
fund the case, thereby forcing small inventors to either settle or drop the
case. What is the individual to do?
Unless supported by a wealthy investor believing in the patent, a small
individual inventor, outside the Northern District of California, is not in
the financial position to file a patent infringement suit to enforce the rights
provided by the patent grant. Under the Northern District of California
Patent Local Rules, however, the schedule of the patent litigation is known
and a court can advantageously provide an early claim interpretation ruling
using only a limited amount of time for discovery. A limited discovery
period favors an individual inventor by decreasing the cost of patent
litigation. The other side of this argument, however, is that the limited
discovery period may prompt the parties to greatly increase the use of legal
resources. For example, parties may hire numerous attorneys to take many
depositions in the interest of conserving time, or may hire many paralegals
to conduct research rather than just one paralegal. The increase in legal
resources greatly increases the cost of patent litigation. With good planning
and case management, however, the individual inventor should find the
courts more accessible when a court limits discovery and holds the claim
interpretation hearing before trial. Furthermore, and as noted by Circuit
Judge Rader in
Cybor,128
an early claim interpretation by a court provides
certainty of the claim terms and prompts early settlement, thereby
enhancing court efficiency.
129
Therefore, the best time for a district court
judge to hold a claim interpretation hearing is early in the patent litigation
process.
VII. C
CONCLUSION
Over time, patent litigation has become costly, and accordingly, has
sometimes made access to the courts quite difficult for individual inventors
who do not have a great deal of the financial resources necessary to enforce
the rights provided for by their patent grant. The introduction of
Markman
hearings, although necessary, somewhat increased the cost of patent
litigation. Although the decision in
Markman v. Westview Instruments, Inc.
finally put to rest the question of whether claim interpretation is a question
of fact for a jury to decide or a question of law for a judge to decide, the
U.S. Supreme Court’s decision that a district court judge should interpret
claims in patent litigation created many new questions. On the question of
whether a patentee’s Seventh Amendment right to a jury trial is violated