ABA Young Lawyers Division IP Webinar PREPARING FOR A MARKMAN HEARING February 2010 Provided by: Jack L. Hobaugh, Jr. Attorney Blank Rome LLP Phone: 202-772-5954 e-mail: Hobaugh@BlankRome.com

My Two Perspectives 2008: USDC District of Utah Law Clerk; Clueless but quick learner; 2009-10: Law Firm IP Litigation Associate; Still learning; Disclaimer: The opinions expressed in my publications and in this presentation are mine and NOT those of the Honorable Chief Judge Tena Campbell.

Claim Construction (Markman Hearing) Plaintiff Defendant Claim Elements Invalidity Infringement Goals: Prove infringement 2) Avoid Prior Art Goals: Avoid infringement Invalidate Patent

Law Clerk (LC) Perspective -Objective Your case is one of many in the court’s queue LC will spend a few days researching and writing a memo; LC may not have any expertise in the patent’s field of technology; LC will probably start with Chisums in the Court Library; LC is highly motivated to support my judge in finding the correct construction as a matter of law; LC have no emotional attachment to either side

Attorney’s Perspective – Subjective Has been on the case for as long as s/he can remember; knows the patent by heart; knows the file history by heart; Understands the strengths and weaknesses of each argument; Understands what is needed to prove infringement.

Know Your Court (Judge) Your “court” is a judge, not a district Different judges may have different rules The Court may adopt a winning side approach and some may split the baby or even reengineer the baby Check the cases Judges are aware of the CAFC reversal rate Credibility If a worm is found in one apple in the barrel, the rest of the apples are suspect.

Review of LC Thoughts (. +-) [Key: ( Review of LC Thoughts (*+-) [Key: (*) New; (+) Additional; (-) Changed position] Patent Rules (+) Trolls (*) Effect of claim construction (+) Expert testimony in brief (-) Maximum of 10 disputed terms (+) The pre-claim construction brief dance (*) The brief – see next slide

The Brief LC will read your briefs and provide a memo with law and analysis to the judge What does NOT help: Criticizing the other side (ad hominem attacks); Explaining how the defendant copied your product; Explaining how your construction applies to the defendant’s product; Assuming LC understands the technology; Telling LC why the opposing party’s position is wrong without telling LC why yours is correct; Bits and pieces of the file history without context; Ignoring the obvious question or issue, i.e. the 800 pound gorilla. What does help: Concise writing applying intrinsic or extrinsic evidence to the law; Full explanation of file history portion (if used); Explanation of why the judge should accept your construction; Less is more!

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Intrinsic Best Claims Specification Next Best File (Prosecution) History “Yet because the prosecution history represents an ongoing negotiation between the PTO and the application, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” [*1317] Extrinsic Treatise Dictionary Other

New Thoughts Invalidity Tutorials Technical Advisor Adversarial Each party provides a tutorial Non-adversarial Court-appointed expert Technical Advisor Rule 706 court expert Open to examinations and depositions Inherent Authority Technical Advisor No examination or depositions Are they really technical advisors or pseudo judges?

Thoughts: Markman Hearing Mooting (+) The focused binder Offer the Court Reporter a technical terms list (*) Focus your argument Be prepared to persuade (+) Know the intrinsic evidence The File (Prosecution) History Put amended claims in context Don’t read to the court its own order

QUESTIONS ? Post-presentation questions, thoughts and general feedback are welcomed and can be sent to my email on the title page of this presentation.