IP Patent Litigation Strategies: Markman Hearings, I

Michael Bettinger, leader of the Intellectual Property Litigation Group at Preston Gates & Ellis LLP, discussed the Markman hearing, which in patent litigation determines the meaning and scope of the patent claims in dispute.

In the Supreme Court's Markman decision, Mr. Bettinger explained, the court held that meaning of patent claims is to be determined by judges as a matter of law, not by juries. According to Mr. Bettinger, it is now the single biggest event that happens in a patent case prior to trial. The practical considerations are enormous. Federal district court judges, whose dockets include a wide variety of criminal and civil Federal cases, now have to decide what a patent means. The judges often do not have the technical expertise of the inventors, engineers and experts, and so they rely upon the lawyers for their understanding of the patent and underlying technology. Patent cases are often won by the legal team that makes the most effective Markman presentation.

Mr. Bettinger focused on the educational role a patent litigator must assume in a Markman hearing, pointing out that federal judges typically have liberal arts, not technical backgrounds, by nature. "Your job is to take a complex task of giving meaning to patent claims and condense it down into a winning formula, to convince a federal judge." Mr. Bettinger pointed out the competing strategies, step back from the technology and focus on the plain meaning of the words used in patent claims, or to concentrate on the technical aspects of the context in which the invention and patent claims arise. "Regardless of which strategy you choose, it is important, early on in a case to have the engineers and technical folks must work closely with the courtroom litigators' strategy to articulate a persuasive argument that is technically accurate and resonates with common sense."

In preparing for the Markman hearing, counsel must closely analyze the patent file history, the limitations added during prosecution of the patent and the meaning of claim terms used in the patent. Mr. Bettinger advised counsel to look at the claims themselves and determine what the words mean. "Recent case authority says that, in determining what claims mean, you start with the words themselves, even the dictionary. Sometimes, if nothing is contrary to the dictionary meaning, you may just get a simple ordinary plain meaning for the term."

Mr. Bettinger stressed the importance of narrowing the Markman presentation to as few terms as possible to avoid overwhelming the Court. The best way to crystallize the claim terms at issue and shape the Markman debate hearing is for the litigators to work with the engineers and technical experts in synthesizing the case down to a single graphic. The graphic should present the complexities of the case in a simple, understandable fashion. Mr. Bettinger concluded "An effective graphic will become the focus of the Markman hearing. It will frame the debate in a way that favors your position on how the patent claim terms are to be construed. It will also force the legal team to articulate clearly and precisely the core of the case."