10/13/08JEN ROBINSON - CLAIM CONSTRUCTION ORDER Claim Construction Order An order issued by the court in which the court construes the meaning of disputed terms in the claim(s) of the patent(s)-in-suit 1

10/13/08JEN ROBINSON - CLAIM CONSTRUCTION ORDER Why Are Terms Disputed? Usually because of INFRINGEMENT: - the PO wants a broad construction to cover the accused device, and - the AI wants a narrow construction to make the patent not cover the accused device. Sometimes because of VALIDITY : - the PO wants a narrow construction to prevent a finding of invalidity over the prior art, and - the AI wants a broad construction to invalidate the patent in light of prior art. 2

10/13/08JEN ROBINSON - CLAIM CONSTRUCTION ORDER Markman Hearings Markman hearing is a synonym for claim construction hearing. Markman was the famous case holding that claim construction is a matter of law for the court. Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), affirmed 517 U.S. 370 (1996). The hearing results in a claim construction order. The court holds the hearing, usually months before trial, to – let the parties explain their arguments about how the claims should be construed, and – narrow the issues for trial, and therefore maybe – promote settlement. Some jurisdictions (NDCal was the first) have special LOCAL RULES forLOCAL RULES patent cases, which specify how claim construction is handled. (Part 4) 3

10/13/08JEN ROBINSON - CLAIM CONSTRUCTION ORDER Experts at Markman Hearings Some hearings are like motion hearings: there is only oral argument by attorneys, and no testimony is taken. Other hearings involve a tutorial by an expert – there is no direct examination, the expert just lectures. The other side may cross-examine the expert or offer its own expert witness. Experts* often draft declarations which the attorneys then reference in their the briefs. 4