Markman Hearings – Current Procedural and Venue Considerations

In the context of affirmative assertion of patents as part of any licensing program, resort to litigation is not uncommon (and perhaps inevitable).  Within the more narrow scope of patent litigation rests the important process of “patent claims construction.” More simply put, “patent claims construction” is the process a court goes through to determine how the exact words of a patent’s claims should be interpreted by a jury to determine if the patent has been infringed.

Within the United States, this process is referred to a “Markman hearing,” named after the case Markman v. Westview (517 U.S. 370 (1996)).  The Markman case established the rule that judges, not juries, are to determine how a patent’s claims are to be interpreted by a jury. It is then left to a jury to apply the facts of an infringement case to the patent claims provided by the judge.

Probably just as important is what the Markman case did NOT establish – that is, specific procedures for how Markman hearings are to be done by any particular Federal court.  It turns out that there is no set procedure for all Federal courts to follow in regard to holding Markman hearings; indeed, there is a great variety of approaches taken by different Federal district courts regarding Markman procedure.  To a licensing professional without legal background, this may seem a bit arcane – but the reality is that such procedural differences may be very important as to the success or failure of a patent infringement claim.

A short note at IP Frontline discusses some current trends in Markman procedure (found at http://www.ipfrontline.com/depts/article.asp?id=18378&deptid=4).  This note is worth the read, particularly for those who may be new to understanding how Markman hearings work.  Markman hearings are typically the most important part of patent infringement litigation – so all IP professionals are well-served by having a good knowledge of the procedures underlying them.