Markman: Courts Continue To Differ Over Timing of Claims Construction

James P. Flynn

This article first appeared in the April 2008 issue of Patent Strategy & Management

Navigating through patent litigation remains a challenge for seasoned litigators and savvy clients. The ruling in Markman v. Westview, 517 U.S. 370 (1996), remains, over decade after its decision, a defining element of the patent litigation landscape. According to the Manual for Complex Litigation (MCL), §33.223, "[t]iming is one of the more problematic issues" for courts dealing with Markman. Indeed, in the two courts (the Northern District of California and the Southern District of Texas) that have substantially revised (N.D.Ca.) or adopted (S.D.Tex.) local patent rules effective in 2008, one has opted for an early approach to Markman (N.D.Ca.) and the other (S.D.Tex.) has left it largely to the discretion of individual judges. This recent contrast highlights the continuing differences of opinion as to the best approach to Markman hearings and their timing.

Consequently, having a plan and knowing when and how Markman will arise in any particular case will go a long way in determining the time, expense, and strategic choices that patent litigation will involve. That is because "[t]he construction of patent claims is pivotal to infringement actions…" MCL, §33.22. But, "[t]here is no consistent approach among the courts as to the procedural boundaries of claim-construction proceedings" since "Markman did not establish when or how a patent was to be construed, only that it must be done prior to submission of the case to the jury." MCL, §33.22. An examination of the alternatives and how courts approach them is informative for counsel and client alike.

I. The Alternatives
The lack of a consistent approach among the courts regarding boundaries of claim construction has made the timing of a Markman hearing in patent cases a challenge. Holding a Markman too early, especially before significant discovery, may result in wasted time and money, or missed opportunities to understand claim construction issues in the context for a fully developed case. But always waiting until after discovery for a Markman hearing is not necessarily the answer either. Attorneys are frequently pushed by clients, or push clients, to see a Markman hearing as an early path to settlement. In the end, of course, knowing something about the practice in a particular forum or before a particular judge is probably the most useful information that one may have in setting reasonable expectations and developing an appropriate strategy.

There are essentially three places in a litigation when Markman hearings can be conducted. They can occur early in a case, before discovery is completed. They can occur after the close of fact discovery, but before expert discovery or dispositive motions. Or they can occur after the close of all discovery in connection with summary judgment motions or in connection with trial or eve of trial proceedings. Each stage may have advantages and disadvantages that can vary depending on one's perspective.

A. Early Markman
For instance, a patent owner may favor an early Markman hearing under many circumstances. That is because one may assume that the patent owner already has an idea as to what the patent means and how that meaning will be supported. Moreover, a plaintiff patent owner can control the timing and location of a litigation's onset, presumably bringing the litigation under circumstances where prelitigation preparation has made such plaintiff ready to make its case early in front of a court of its choosing. Conversely, the accused infringer may want in many cases additional time to search for and locate relevant prior art that might invalidate a patent or influence its construction, suggesting therefore that a later Markman hearing is preferable.

But these considerations are by no means exhaustive or always applicable. A patent owner in a Hatch-Waxman case, for example, must determine within forty-five days of a receipt of the appropriate notice whether to bring an infringement suit against a generic drug company intent on entering the market. That statutory constraint may alter the conception that the patent owner controls the timing of a litigation's onset; the related automatic thirty-month stay at the litigation's outset of the generic company's ability to enter the market may suggest that quick resolution of determinative issues is more likely to be sought by a defendant than a patent owner. Consequently, a Hatch-Waxman defendant or any other defendant believing that it has a strong invalidity or non-infringement defense that is keyed to a certain construction of the patent's claims may actually push more aggressively for an early Markman hearing.

B. Middle Markman
There are many proponents of having Markman hearings after fact discovery has concluded but before expert discovery and other proceedings. Those favoring this approach see it as the most complete and reasonable approach—far enough into the case that each side has had the opportunity for discovery and case development, but not so far as to have entailed the expense and time of a full litigation. By conducting a Markman hearing at this point, experts on infringement and non-infringement need not render opinions on alternative or differing claim constructions.

Proponents of either earlier or later Markman hearings do not leave such assertions unchallenged, however. They point out the potential wasted time during fact discovery exploring facts related to irrelevant constructions. They also note that, despite the supposed emphasis Markman places on intrinsic evidence (e.g. language of patent itself), Markman submissions almost invariably include expert declarations of some type, meaning that this expense is not fully avoided by holding a Markman hearing at this stage.

C. Later Markman
Finally, some favor later Markman hearings. Despite the judicial and systemic interest in early resolution, some judges favor later Markman hearings and see Markman has having little impact on settlement posture. See Patent Litigation in the District of Delaware: The Judges' Perspective, 18 Delaware Lawyer 6 (2000) ("I want to see what [the experts] say and what the impact of the claim construction will be on summary judgment and on validity before I do the claim construction.")

II. The Rule Making Trend Is Toward Earlier Markman Hearings
While the proclivities of individual judges and courts continues to vary, those who have addressed the Markman timing questions as a matter of policy seem to have pushed for an early to mid Markman approach.

A. Local Court Rules Defining Timing Of Markman Hearings
Early Markman has judicial proponents. The Northern District of Georgia is an example of a federal court that has opted for early Markman hearings. See Local Patent Rules 4 and 6 (available at http://www.gand.uscourts.gov/localrules.htm). In accordance with that district's local rules, parties must file within 130 days of the filing of their discovery plan a Joint Claim Construction Statement specifying areas of agreement or dispute on claim construction issues, and must file initial Markman submissions within 30 days thereafter. Likewise, Judge Robart of the Western District of Washington issued a standing order in July 2007 that called for Markman hearings within 180 days (six months) of the initial scheduling order, and made provisions within that timetable for the exchange of construction contentions and expert support, joint claim charts, and full briefing. See http://www.wapatents.com/RobartStanding%20OrderinPatentCase.pdf. But perhaps most intriguing are new rules of the Northern District of California that took effect on March 1, 2008, which lay out aggressive time lines that will have Markman hearings addressed within six months of initial case management conferences in a district that sees large amounts of patent litigation. See http://www.cand.uscourts.gov/CAND/LocalRul.nsf/ fec20e529a5572f 0882569b6006607e0/5e313c0b7e4cd680882573e20062dbcf?OpenDocument. The Rules in the Eastern District of Texas are similarly aggressive, though they retain the concept of "preliminary" proposed constructions abandoned by the recent amendments in California. See http://www.txed.uscourts.gov/Rules/LocalRules/Documents/Appendix%20M.pdf. The Western District of Pennsylvania also has aggressive rules that call for early disclosure, and early joining of issue on disputed claim construction. Available at http://www.pawd.uscourts.gov/. In fact, under the Western District Rules, initial Markman briefs may be submitted less than 100 days after the initial conference.

Rules such as these allow the sophisticated counselor and client to understand the likely course of patent litigation in these particular districts. To the extent that forum choices are available, a review of local rules can help careful plaintiffs pick that jurisdiction whose rules will suit their needs and desires as to the patent litigation overall, including the timing of Markman hearings.
B. What To Do In The Absence of Specific Rules
But many jurisdictions have not adopted patent specific rules and many individual judges have not issued standing orders. There are, moreover, some courts that have adopted a more flexible approach such as the Southern District of Texas, where individual judges, and consequently the parties, retain more scheduling discretion as to Markman under the recently enacted (effective January 1, 2008) local patent rules. Available at http://www.txs.uscourts.gov/district/rulesproc/. This does not mean, however, that litigators and litigants are left without resources in determining which jurisdictions are more likely to have a schedule favorable to their interests.
That is because there are services available that can tell a client or counsel, by district and by judge, the total number of patent cases, the number in which Markman hearings were held, and the average number of days from case filing until a Markman hearing. See, e.g., http://law.lexisnexis.com/patent-case-reports/features. These same services can provide breakdowns by judge as to outcomes in patent cases on motions for temporary restraining orders and preliminary injunctions, which can also play into a plaintiff's assessment of what jurisdictions to move toward or avoid, or into a defense counsel's initial case assessment once a plaintiff has chosen a forum. Coupled with the anecdotal experience of seasoned litigators in the given jurisdiction, such statistics can provide valuable insights.

III. Conclusion
Patent litigation remains costly and time consuming, and that is an expectation that all parties should have as they enter it. An understanding of how a particular judge or jurisdiction will approach such litigation, and one of its major aspects (the Markman hearing) is invaluable in managing those expectations and moving forward in a cost effective, informed manner.

* James Flynn is a shareholder and member of the firm of Epstein Becker & Green, and is resident in the firm's Newark, New Jersey office. He litigates and counsels clients concerning intellectual property matters of all sorts, including patent litigations. He is also the author of the concluding chapter ("Markmanship: Hitting the Bull's Eye in Your Patent Case") of the 2007 publication from Aspatore Books's Inside the Minds series entitled Conducting Markman Hearings in Patent Infringement Lawsuits: Leading Lawyers on Interpreting Claims, Developing Court Presentations, and Making a Strong Argument.