Markman v. Westview, 517 U.S. 370 (1996) is about to enter its teen years. Like other important patent decisions, and like many teenagers, Markman requires clear ground rules to elicit acceptable behaviors. Because the timing of Markman hearings and filings remains a point of possible friction, the ground rules that have been established by many courts have laid down the law on timing. Indeed, in the two courts (the Northern District of California and the Southern District of Texas) that have substantially revised (N.D.Ca.) or adopted (S.D.Tex) local patent rules effective in 2008, one has opted for an early approach to Markman (N.D.Ca.) and the other (S.D.Texas) has left it largely to the discretion of individual judges. This recent contrast highlights the continuing differences of opinion as to the best approach to Markman hearings and their timing.

Though “Markman did not establish when or how a patent was to be construed, only that it must be done prior to submission of the case to the jury,” and there has been “no consistent approach among the courts as to the procedural boundaries of claim-construction proceedings,” Manual for Complex Litigation, §33.22, during Markman’s early years, courts are increasingly bringing a more disciplined approach to dealing with Markman. An examination of how courts have begun approaching these issues is informative for counsel and client alike.

I. The Rule Making Trend Is Toward Earlier Markman Hearings

While the proclivities of individual judges and courts continues to vary somewhat, those who have addressed the Markman timing questions as a matter of policy seem to have pushed to have Markman issues addressed earlier in the litigation schedule.

A. Local Court Rules Defining Timing Of Markman Hearings

Early Markman has judicial proponents. The Northern District of Georgia is an example of a federal court that has opted for early Markman hearings. See Local Patent Rules 4 and 6 (available at http://www.gand.uscourts.gov/localrules.htm). In accordance with that district’s local rules, parties must file within 130 days of the filing of their discovery plan a Joint Claim Construction Statement specifying areas of agreement or dispute on claim construction issues, and must file initial Markman submissions within 30 days thereafter. Likewise, Judge Robart of the Western District of Washington issued a standing order in July 2007 that called for Markman hearings within 180 days (six months) of the initial scheduling order, and made provisions within that timetable for the exchange of construction contentions and expert support, joint claim charts, and full briefing. See http://www.wapatents.com/RobartStanding%20OrderinPatentCase.pdf. But perhaps most intriguing are new rules of the Northern District of California that took effect on March 1, 2008, which lay out aggressive time lines that will have Markman hearing addressed within six months of initial case management conferences in a district that sees large amounts of patent litigation. See here.

The Rules in the Eastern District of Texas are similarly aggressive, though they retain the concept of “preliminary” proposed constructions abandoned by the recent amendments in California. See here. The Western District of Pennsylvania also has aggressive rules that call for early disclosure, and early joining of issue on disputed claim construction. Available at var id = null; function Savethis(memberid, articleid, myurl) { if(id!=null) {if(!id.closed){id.close();}} var parent = window.name; var WinName = 'saveart'; var page = myurl+'articlesave.asp?memberid='+memberid+'&articleid='+articleid; id = window.open(page,WinName,"width=510,height=380,resizable,opener="+parent).focus(WinName); }