step by step analysis of the timing of patent litigation
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Message: rwrf, this article should help
A Markman hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim, when patent a plaintiff alleges infringement. It is also known as a "Claim Construction Hearing".
Holding a Markman hearing in patent infringement cases has been common practice since the U.S. Supreme Court, in the case of Markman v. Westview Instruments, Inc., found that the language of a patent is a matter of law for a judge to decide, not a matter of fact for a jury to decide. In the United States, juries determine facts and judges determine matters of law.
Markman hearings are important, since the court determines patent infringement cases by the interpretation of claims. A Markman hearing may encourage settlement, since the judge's claim construction finding can indicate a likely outcome for the patent infringement case as a whole. Markman hearings are before a judge, and generally take place before trial. A Markman hearing may occur before the close of discovery, along with a motion for preliminary injunction, or at the end of discovery, in relation to a motion for summary judgment. A Markman hearing may also be held after the trial begins, but before jury selection.
The evidence considered in a Markman hearing falls into two categories: intrinsic and extrinsic. Intrinsic evidence consists of the patent documentation and any prosecution history of the patent. Extrinsic evidence is testimony, expert opinion, or other unwritten sources; extrinsic evidence may not contradict intrinsic evidence. Serious researchers are directed to use premium services Lexis and Westlaw that offer Markman Orders and Filings databases containing selected orders, motions, trial court memoranda, briefs, claim construction charts and other civil filings from selected U.S. District courts.
B.
Northern District of California Patent Local Rules
One model for the timing of patent infringement has recently been set
by the U.S. District Court for the Northern District of California. As
discussed in detail below, the Northern District of California Patent Local
Rules include a time frame for the steps involved in patent litigation. The
effective date of the rules are January 1, 2001. The following discussion
will focus on a step by step analysis of the timing of patent litigation in a
hypothetical case beginning on January 1, 2001.
Day one of the patent litigation, or January 1, 2001, in this hypothetical
case, will include an Initial Case Management Conference, in which the
parties confer regarding various topics. According to court rules, the topics
will include: (1) proposed modifications of deadlines provided by the
patent local rules; (2) whether live testimony will be presented in the
Markman
hearing; (3) the need for limits on discovery; (4) the order of
presentation at the
Markman
hearing; and (5) the scheduling of the
Markman
hearing.107
It is important to note that these courts require the
parties to meet and discuss the intricacies of the
Markman
hearing and
what steps will be taken before reaching the
Markman hearing.108
For
example, the above mentioned topics include whether or not live testimony
will be needed during the
Markman
hearing and the need for limits on
discovery. This is advantageous in that it allows the parties to anticipate
and agree on matters such as whether or not the parties are in for a lengthy
and costly patent litigation. This section also provides for additional case
management conferences if the need for them should arise.
109
Within ten days of the Initial Case Management Conference, or on
January 11, 2001, in this hypothetical case, “a party claiming patent
infringement must serve on all parties a ‘Disclosure of Asserted Claims
and Preliminary Infringement Contentions.’”
110
The “Disclosure of
Asserted Claims” and the “Preliminary Infringement Contentions” shall
contain a detailed description of the claims and the allegedly infringing
apparatus, product, device, process, method, act, or other
instrumentality.
111
This rule goes into great detail as to document
production, and more particularly, as to the specific documents that must
be provided by the party claiming infringement.
112
“Not later than 45 days after service upon it of the ‘Disclosure of
220
Asserted Claims and Preliminary Infringement Contentions,’ each party
opposing a claim of patent infringement, shall serve on all parties its
‘Preliminary Invalidity Contentions.’”
113
In the present hypothetical case,
therefore, the “Preliminary Invalidity Contentions” will be provided by
February 24, 2001. This rule requires the parties to provide a list of the
prior art which allegedly anticipates each asserted claim or renders it
obvious and a chart showing where in the prior art each asserted claim can
be found.
114
Therefore, within 45 days of the commencement of the patent
litigation in the Northern District of California, all of the parties are likely
to be aware of the infringement and invalidity contentions on both sides.
Once again, this quickly and efficiently provides all parties with a forward
view of the patent litigation.
“Not later than 10 days after service of the ‘Preliminary Invalidity
Contentions’ pursuant to Patent L. R. 3-3, each party shall simultaneously
exchange a list of claim terms, phrases, or clauses which that party
contends should be construed by the Court.”
115
In the present hypothetical
case, therefore, the simultaneous exchange of the claim terms that should
be construed by the judge will be provided no later than March 6, 2001.
This rule is advantageous because it quickly removes any ambiguity as to
which terms a court is to construe. Additionally, this will likely decrease
the costs associated with discovery by focusing both parties on the issues
at hand rather than having the parties wasting valuable time and resources
guessing which terms are going to be at issue.
Within twenty days after the exchange of the “Proposed Terms and
Claim Elements for Construction,” or March 26, 2001, according to the
hypothetical case, the Northern District of California Patent Local Rules
require all parties to simultaneously exchange preliminary proposed
construction of each claim term which the parties collectively have
identified for claim construction purposes.
116
The rule provides that the
parties should simultaneously provide a “preliminary identification of
extrinsic evidence, including without limitation, dictionary definitions,
citations to learned treatises and prior art, and testimony of percipient and
expert witnesses they contend support their respective claim
constructions.”
117
This rule limits the time available for expert witness
depositions and research to only sixty-five days from the initial case
management conference.
118
This can be a double-edged sword, however,
because although it provides for a time efficient process, the gathering of
this information in such a short period of time could be costly because it
may necessitate a team of attorneys in order to get it done. Patent litigation
is not unique to the region where the inventor is located, but can be
nationwide, especially if the allegedly infringing invention is something
that is sold or used nationwide. In such a case, gathering the required
information in such a short time is a costly process. Furthermore, expert
witnesses might also be located across the nation. The sixty-five day limit
can work against the parties as it may dangerously limit the time available
for gathering extrinsic evidence that may be necessary for the claim
interpretation hearing. It can be advantageous to the patent holder whose
patent is clearly drafted because the limited time will greatly decrease the
cost of discovery, especially if the patent can stand on its own by not
requiring any extrinsic evidence.
“Not later than 60 days after service of the ‘Preliminary Invalidity
Contentions,’ the parties shall complete and file a Joint Claim Construction
and Prehearing Statement.”
119
Accordingly, in the present hypothetical
case, the parties would therefore file the “Joint Claim Construction” and
“Prehearing Statement” by April 25, 2001. The patent local rules note that
the “Joint Claim Construction” should include: (1) a construction of the
terms upon which both parties agree; (2) each parties proposed
construction of claim terms in dispute; (3) anticipated length of time of the
Markman
hearing; (4) whether either of the parties intend to call any
witnesses at the
Markman
hearing; and (5) a list of issues that should be
heard by the judge at a prehearing conference prior to the
Markman
hearing.
120
Again, this is efficient in that it quickly eliminates many issues
that a court would normally have to decide. Under the Northern District of
California Patent Local Rules, the terms that the district court judge will
have to construe are clearly set forth, thereby eliminating any speculation
that may occur during the
Markman
hearing (which of course makes for a
longer hearing).
121
The Northern District of California rules then instruct the parties to
complete all discovery relating to claim construction within thirty days of
the filing of the “Joint Claim Construction” and the “Prehearing
Statement.”
122
In the present hypothetical case, therefore, discovery would
222
be closed by May 25, 2001. Once again, this becomes a double-edged
sword. Under the Northern District of California’s rules, discovery is
closed just 145 days after the initial case management conference takes
place. While this is an efficient process, complex patent litigation such as
that in which more than one patent is at issue, the question must be asked
whether or not 145 days is enough time to collect the information
necessary to litigate the patents. Conversely, this is quite advantageous in
the case of less complex patent litigation where only one patent is at issue.
For example, the costs of discovery will likely decrease because both
parties will have to find ways to maximize time efficiency because of the
time constraints. This may mean foregoing a second expert witness
opinion, or only relying on two treatises rather than three.
Within forty-five days after the “Joint Claim Construction” and
“Prehearing Statements” are filed, the party claiming infringement is
required to file an opening brief along with any evidence supporting its
claim construction.
123
Within two weeks of filing the brief, the opposing
party is required to file a responsive brief along with any supporting
evidence.
124
Within one week after service of the responsive brief filed by
the opposing party, the party claiming infringement is required to file a
reply brief.
125
Accordingly, the due dates of the opening brief, the opposing
party’s responsive brief, and the reply brief in the present hypothetical case
are June 9, 2001, June 23, 2001, and June 30, 2001, respectively. The
Markman
hearing will be held two weeks following the submission of the
reply brief, subject to court availability.
126
Therefore, under the
hypothetical case as presented throughout this discussion, the
Markman
hearing would take place by July 14, 2001, depending on court availability.
The Northern District of California Patent Local Rules have truly
streamlined patent litigation. Within 195 days from the initial Case
Management Conference, the
Markman
hearing is completed. The
Northern District of California has made this possible by shifting the
burden of eliminating issues into the hands of the parties. For example, the
parties are required to present the construction of claim terms that are
agreed upon and a determination of the claim terms that the parties cannot
agree upon. The district court judge can therefore easily combine the
agreed upon interpretation of the claims submitted by the parties (if the
district court judge agrees with the interpretation of those claim terms)
with the interpretation of the claim terms in dispute in order to provide a
2002] MARKMAN
EXPOSED: CONTINUING PROBLEMS WITH MARKMAN HEARINGS
speedy interpretation of the claims prior to the commencement of the trial
phase of the litigation. The speed of this process in completing the
Markman
hearing truly gives the parties a good understanding of their
case, where they stand, and the road ahead. In most cases, the
interpretation of the claims will set forth the previously unknown
boundaries of the patent at issue. With the boundaries clearly defined, the
parties may be more willing to settle the case, rather than subject
themselves to the extra costs associated with trial.
Hold Claim Interpretation Hearings Early
to Provide More Certainty
As presented above and as adopted by the U.S. District Court for the
Northern District of California, the best possible time to hold
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
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