Markman: Laying Down the Ground Rules

James Flynn
date: Wednesday, April 09, 2008

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 http://www.pawd.uscourts.gov/. In fact, under the Western District Rules, in initial Markman briefs may be submitted less than 100 days after the initial conference.

Rules such as these allow the sophisticated counselor and client to understand the likely course of patent litigation in these particular districts. To the extent that forum choices are available, a review of local rules can help careful plaintiffs pick that jurisdiction whose rules will suit their needs and desires as to the patent litigation overall, including the timing of Markman hearings.

B. What To Do In the Absence of Specific Rules

But many jurisdiction have not adopted patent specific rules and many individual judges have not issued standing orders. There are, moreover, some courts that have adopted a more flexible approach such as the Southern District of Texas, where individual judges, and consequently the parties, retain more scheduling discretion as to Markman under the recently enacted (effective January 1, 2008) local patent rules. Available at http://www.txs.uscourts.gov/district/rulesproc/. Such flexibility is not necessarily a more lenient or less disciplined approach, just a different one. Litigators and litigants in such jurisdictions still have the ability to determine what the unwritten rules are to determine which jurisdictions are more likely to have a schedule favorable to their interests.

That is because there are services available that can tell a client or counsel, by district and by judge, the total number of patent cases, the number in which Markman hearings were held, and the average number of days from case filing until a Markman hearing. See, e.g., http://law.lexisnexis.com/patent-case-reports/features. These same services can provide breakdowns by judge as to outcomes in patent case on motions for temporary restraining orders and preliminary injunctions, which can also play into a plaintiff’s assessment of what jurisdictions to move toward or avoid or into a defense counsel’s initial case assessment once a plaintiff has chosen a forum. Coupled with the anecdotal experience of seasoned litigators in the given jurisdiction, such statistics can provide valuable insights.

II. Conclusion

An understanding of how a particular judge or jurisdiction will approach patent litigation and one of its major aspects, the Markman hearing, is invaluable in managing expectations and moving forward in a disciplined manner.