10/13/08 JEN ROBINSON - CLAIM CONSTRUCTION ORDER

Claim Construction Order

An order issued by the court in which

the court

construes

the meaning of

disputed terms

in the claim(s)

of the patent(s)-in-suit

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10/13/08 JEN ROBINSON - CLAIM CONSTRUCTION ORDER

Why Are Terms Disputed?

Usually because of INFRINGEMENT:- the PO wants a broad construction to cover the accused device, and - the AI wants a narrow construction to make the patent not cover the accused device.

Sometimes because of VALIDITY :- the PO wants a narrow construction to prevent a finding of invalidity over the prior art, and - the AI wants a broad construction to invalidate the patent in light of prior art.

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10/13/08 JEN ROBINSON - CLAIM CONSTRUCTION ORDER

Markman Hearings

Markman hearing is a synonym for claim construction hearing. Markman was the famous case holding that claim construction is a

matter of law for the court. Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), affirmed 517 U.S. 370 (1996).

The hearing results in a claim construction order. The court holds the hearing, usually months before trial, to

– let the parties explain their arguments about how the claims should be construed, and

– narrow the issues for trial, and therefore maybe– promote settlement.Some jurisdictions (NDCal was the first) have special LOCAL RULES forpatent cases, which specify how claim construction is handled. (Part 4)

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10/13/08 JEN ROBINSON - CLAIM CONSTRUCTION ORDER

Experts at Markman Hearings

Some hearings are like motion hearings: there is only oral argument by attorneys, and no testimony is taken.

Other hearings involve a tutorial by an expert – there is no direct examination, the expert just lectures. The other side may cross-examine the expert or offer its own expert witness.

Experts* often draft declarations which the attorneys then reference in their the briefs.

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