Preface
This brief note is not legal advice and is for educational purposes only.
Discussion
If you find yourself in a patent litigation case (most likely patent infringement) you’re likely to run into what is called a Markman Hearing. As you are aware the metes and bounds of a patent are defined by the claim language. 35 U.S.C. § 112(b) and lots of case law.
Naturally all sides argue for an interpretation of the claim language that favors their side.
In 1996 in the case Markman v. Westview Instruments, Inc., 517 U.S. 370 the interpretation of such language was changed in that now judges, not juries, were to settle the claim language dispute and thus the scope of the claims. This did not settle the infringement matter just the metes and bounds of the claim language.
As you can readily imagine this could be critical to the infringement case itself. For example, suppose the claim language recites “a container for holding water”, and the infringement suit boils down to whether the container is stamped out of steel or molded plastic. Rather than litigating for years, it makes economic and judicial sense to have a Markman Hearing and resolve this up front. In many cases determination of the scope of the claim language will lead to, if not a rapid resolution, at least a narrowed lawsuit.
Accordingly, a Markman Hearing is a very prudent process early in litigation. Now some limited discovery may be needed, however in most cases, the patent application (having the written description and the figures), the prosecution history (contained in the USPTO image file wrapper – having all inventor USPTO communications), and the claim language itself will provide sufficient basis to make an informed legal ruling on the scope of the language of the claims. That is, intrinsic evidence should be the primary source for claim construction with extrinsic evidence (like expert and inventor testimony, dictionaries, treatises, etc.) only used when necessary. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
Summary
If you find yourself in an infringement case, best practice is to have a Markman Hearing as soon as possible to narrow the case, lower the costs, and move more rapidly to a resolution. At Heimlich Law, PC we can assist you in your Markman Hearing. Contacting your attorney earlier rather then later will save everyone grief 🙂
