1. ABA Young Lawyers Division IP Webinar
PREPARING FOR A MARKMAN HEARING
February 2010
Provided by: Jack L. Hobaugh, Jr.
Attorney
Blank Rome LLP
Phone:

2. My Two Perspectives 2008: USDC District of Utah Law Clerk;
Clueless but quick learner;
: 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.

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

4. 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

5. 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.

6. 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.

7. 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

8. 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!

9. 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

10. 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?

11. 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

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