Below is the beginning of an article regarding appeals of Markman hearing and some of the issues. My question is: Does the construction of the Judge in this case preclude either party prevailing with its own construction of the technical issues of the case when appeal is made? Another question is: Did the judge make a construction different from either party, and if so, does it preclude an appeals court from considering either sides presentation of the technical issues, despite that being the crux of the case at the Markman hearing?

I was happy to note that reversal rate on appeal of Markman decisions on a recent survey was 45%.

OHS West:260164464.1 1

MARKMAN APPEALS

By William L. Anthony

Orrick, Herrington & Sutcliffe LLP

I. PRACTICAL ASPECTS

A. Appeals begin with the Markman proceedings below

1. Build a record – preserve Markman issues for appeal

Proffer claim constructions and supporting arguments that will work on appeal.

Notwithstanding the “de novo” aspect of Markman appeals, assume that the

standard appellate rules apply; the Federal Circuit will not consider arguments

and claim constructions not considered by the trial court. In the course of the

Markman hearings, preserve your right to appeal. Many judges attempt to reach

a compromise between the parties, soliciting each parties consent to the a

middle-ground construction. Diplomatically object to the compromise

construction while hopefully not losing ground on the compromise itself.

Keep in mind that the Markman order is not final until the jury is instructed. Thus,

while evidence at trial is not directed to claim construction per se, it may

nonetheless shed light on the Markman issues. When appropriate, ask for a

modification of the Markman order before the jury is instructed based upon that

evidence. That evidence can then be relied upon in the Markman appeal.

2. The special problem of Troll litigation

Many Trolls have focused on getting to a jury with little concern for appeal error.

Frequently, they seek overly-broad claim constructions on the bet that defendant

cannot meet its heavy burden of proving validity by clear and convincing

evidence. Their assumption appears to be that a post-trial injunction cannot be

tolerated by the defendant, and hence, there will be no appeal. The decision in

Phillips v. AWH Corp., 376 F.3d 1382 (Fed. Cir. 2004) aff'd in part, rev'd in part

415 F.3d 1303 (Fed. Cir. 2005) (en banc) cert. denied 126 S.Ct. 1332 (2006) is a

help in avoiding such overly-broad constructions. Moreover, Ebay Inc. V.

Mercexchange, L. L. C.,126 S. Ct. 1837; 164 L. Ed. 2d 641; 2006 U.S. LEXIS

3872 if it lives up to its promise of limiting injunctions in Troll cases will lessen

that practice. Therefore, in Troll cases, appeals of Markman orders has gained

greater significance. Indeed, we may see more reversal of Markman orders as a

result of more frequent appeal of Troll cases.

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3. It’s all about the Markman – on appeal

We have all heard of how many cases are effectively decided by the Markman.

It’s true, but it is frequently not the Markman order of the trial court that is the key,

but the Markman construction on appeal. Indeed, in one recent survey, the

Markman reversal rate was placed at 45%. See Love, Hate and Markman by

Mark Banner, 6 Sedona Conf. J. 131, 132 (2005). Thus, the appeal should

always be a principal consideration in any well-prosecuted case.

Remainder of the article can be found at:

lawseminars.com/materials/08CLAIMCA/claimca%20m%20Anthony%2012-28.pdf