Markman and Claim Construction Hearing in Patent Infringement: What You Need To Know
The Federal Circuit’s en banc decision in Markman v. Westview Instruments, Inc. in 1995, affirmed by the Supreme Court in 1996, established that claim construction is an issue of law to be determined by the court. Nine years later in Phillips v. AWH Corp., the Federal Circuit reaffirmed the “bedrock principle” that “the claims of a patent define the invention to which the patentee is entitled the right to exclude”, and that the claims are “of primary importance” and in construing the claims, the analytical focus must begin and remain centered on the language of the claims themselves. In the progeny of subsequent cases, the Federal Circuit has reaffirmed that the claims of a patent are “of primary importance” in defining the invention, and the analytical focus of claim construction must center on the language of the claims themselves. Markman hearings are critical in patent cases to establish the meaning and scope of the claims which, in turn, often facilitates the subsequent determination of infringement or claim validity. Markman hearings are therefore critical in resolving disputes in patent litigations.
The Knowledge Group has assembled a panel of thought leaders to discuss significant topics involved in the claim construction process, including the guiding principles which judges use, the practices of judges in various jurisdictions, the practices in multi-defendant litigations, and the relevance of prior constructions of the same patent claims. Moreover, the speakers will also address the best practices in preparing for Markman hearings in patent infringement cases.
Robert A. McFarlane, Partner,
Hanson Bridgett LLP
- Intrinsic Evidence: Using the patent specification, claims and file history to support your claim construction.
- Narrow or Broad? Determining the scope of patent claims based on disclosures in the specification and in the prior art.
- Extrinsic Evidence: Using dictionaries and treatises to evaluate ordinary meaning.
- Additional comments on using expert witnesses to establish meaning
Steven J. Pollinger, Principal ,
- How to structure your claim construction hearing presentation, including whether and when to use live witnesses at the claim construction hearing.
- How to select the terms that you would like construed, including a discussion of when the court is required and not required to construe terms.
- Whether or not to provide a technology tutorial prior to the claim construction hearing, and if so, what it should contain and what it should look like.
Willem G. Schuurman , Partner ,
Vinson & Elkins
- More multiple defendant cases and how the courts are responding to that. How defendants should handle the claim construction process when multiple cases filed by the same plaintiff and involving overlapping groups of patents, have been consolidated for claim construction purposes.
- Additional comments on the aspects of how you select terms that need to be construed; and
- Additional comments on how to present an effective technology tutorial.
Kenneth A. Godlewski, Partner,
Troutman Sanders LLP
- Potential impact of Federal Circuit en banc hearing in Lighting Control LLC case-reshaping or removing de novo review of claim construction in Cybor Corp. v. FAS Technologies. How to advise district court judges during period case is being briefed and decided by Federal Circuit/U.S. Supreme Court.
- How to protect your record pending a decision in Lighting Control
- Potential impact of petition for cert in Mirowski Family Ventures, LLC v. Medtronic, particularly as to importing limitations from the patent specification to limit ordinary meaning of patent claim terms.
- Using search term negotiations in electronic discovery as predicate for selecting terms for claim construction.
- If appropriate (no model rules or set court timing orders), selecting the timing of the Markman hearing.
Rob Kinder, Attorney ,
Dickstein Shapiro LLP
- Why the Federal Circuit granted en banc review in Lighting Ballast Control LLC v. Philips Electronics North America Corp. et al., Nos. 2012-1014, -1015 (Fed. Cir. Mar. 15, 2013), and how this case represents the Court coming full circle from its Cybor decision in 1998.
- The most likely outcome for the Court in Lighting Ballast – how the Court will adopt a position that holds claim construction is a legal question comprised of underlying factual considerations subject to deferential (clear error) review on appeal; the likely voting positions of each Federal Circuit judge.
- What are the underlying factual considerations that comprise claim construction; should litigants in claim construction proceedings ask district courts right now to make “findings of fact,” especially for favorable claim construction rulings; should litigants demand to “present evidence” during Markman.
- (Time permitting) Is the Supreme Court likely to review any decision of the Federal Circuit related to granting deferential review in claim construction.
Who Should Attend:
- Patent Litigators
– In-House Counsel likely for technology, pharma, biotech, & manufacturing companies
– Patent Licensing Attorneys
– IP Attorneys, And Related Consultants
– Other Related Professionals
Rob McFarlane is a litigation partner and registered patent attorney focused on patent litigation, trade secret and other intellectual property and technology-related disputes and counseling. He is a Stanford-educated engineer and has litigated patent infringement matters in courts throughout the country involving a wide range of technologies, including semiconductor fabrication and power technologies, microprocessor design, computer hardware and memory devices, optics and optoelectronics, circuits, textile chemistry, oil exploration and refining, optical character recognition maritime operations, and consumer products. He is experienced in both bench and jury trials and has conducted examinations of fact and expert witnesses in federal district court, arbitration and administrative proceedings.
Rob teaches patent law as an adjunct professor at Golden Gate University School of Law, has been a guest lecturer in intellectual property at the University of San Francisco, and has served as an instructor of copyright law in an LLM program jointly offered by Santa Clara University and Korea’s Seoul National University.
Prior to joining the firm in 2011, Mr. McFarlane was a litigation partner with Townsend and Townsend and Crew LLP where he practiced as a patent litigator for 13 years and then Chair of IP and Patent litigation at Carroll, Burdick and McDonough LLP.
Rob McFarlane is a litigation partner and registered patent attorney focused on patent litigation, trade secret and other intellectual property …
Steve Pollinger is a Principal in McKool Smith’s Austin office. He is a trial lawyer and registered patent attorney who has achieved courtroom victories in cases involving diverse technologies in broad range of industries, including software, electronics, and medical devices, among others. Mr. Pollinger holds a master’s degree in electrical engineering, which allows him to understand the disputed technologies and to reduce the disputes to explanations and themes that are readily understood and compelling in the courtroom. He previously served as a Judicial Clerk to the Honorable S. Jay Plager at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., and speaks frequently on intellectual property litigation matters.
Steve Pollinger is a Principal in McKool Smith’s Austin office. He is a trial lawyer and registered patent attorney who …
Practice Areas: Bill is a seasoned patent litigator with experience in chemical, mechanical, medical, electrical, semiconductor, software, pharmaceutical, and biotechnology fields. Known for early development of winning strategies in patent litigations, Bill has an exceptional record of success in Markman hearings, trials, and appeals to the Court of Appeals for the Federal Circuit. Bill has been recognized as a leading intellectual property lawyer in Chambers USA (2006-2012), Chambers Global (2006-2010) and IAM Patent Litigation 250 (2011-2012).
Career: South Texas College of Law, JD, magna cum laude, 1981; University of Cape Town, LLB 1964; BS 1962.
Publications: O’Connor’s Federal Intellectual Property Codes Plus, co-author.
Practice Areas: Bill is a seasoned patent litigator with experience in chemical, mechanical, medical, electrical, semiconductor, software, pharmaceutical, and biotechnology …
Ken is a partner in the firm’s intellectual property practice group. He has extensive experience in patent/intellectual property litigation and counseling with an emphasis on financial services, banking, and insurance patent disputes in defense of large financial service companies related to call center, authorization, encryption, imaging, data transmission, smart cards, customized offers, e-commerce, and Dodd Frank related issues.
His background also includes intellectual property issues in a variety of additional industries, including medical devices, sporting goods, consumer products, telecom, aerospace technology and the defense industry, artificial intelligence, and gaming. Ken has represented famous golfers, Oscar® winners, and clients who developed the overhead Skycam® used in sporting events. He has successfully tried patent cases to verdict and before the bench in numerous jurisdictions throughout the United States acting as trial counsel in a three-week trial involving progressive gaming and Caribbean Stud Poker® in the District of Colorado, multi-week jury patent jury trial involving maintenance of military composite aircraft in the Northern District of Ohio, representing medical device companies in patent infringement suits, and trials throughout the country as well as patent litigation related to consumer products, textile manufacturing, aerosol propellants, and telecom/video technology.
Ken is a partner in the firm’s intellectual property practice group. He has extensive experience in patent/intellectual property litigation and …
Rob has served as counsel in numerous patent, design patent, trademark, trade dress, and trade secret lawsuits in federal courts throughout the United States, including recently presenting Markman arguments in California and in the Eastern District of Texas. Rob also specializes in appeals before the United States Court of Appeals for the Federal Circuit. He has counseled clients and litigated cases involving several technical areas, as well drafting patents in several technical fields. Prior to entering private practice, Rob served as a law clerk to the Honorable H. Robert Mayer, former Chief Judge of the United States Court of Appeals for the Federal Circuit. During his clerkship, the Federal Circuit revisited the claim construction standard en banc in the Court’s Phillips decision.
Rob has served as counsel in numerous patent, design patent, trademark, trade dress, and trade secret lawsuits in federal courts …
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About Hanson Bridgett LLP
Hanson Bridgett is a law firm with more than 150 attorneys in offices in San Francisco, Sacramento, the North Bay, Silicon Valley and the East Bay. Serving clients since 1958, we are well known in Northern California and have earned a national reputation in many of our practice areas.
About McKool Smith
With more than 175 trial lawyers working across offices in California, New York, Washington, DC, and Texas, McKool Smith has established a reputation as one of America’s leading trial firms. The firm has won more National Law Journal and VerdictSearch “Top 100 Verdicts” over the last five years than any other law firm. In 2012, the firm was named intellectual property “Firm of the Year” by Benchmark Litigation, and previously was recognized as “IP Firm of the Year” by Law360. McKool Smith represents clients across a broad range of practice areas, including complex commercial litigation, intellectual property, bankruptcy, and white collar defense matters.
About Vinson & Elkins
Vinson & Elkins LLP has grown to approximately 700 lawyers located in 16 offices around the world, creating a global team of multi-lingual lawyers in numerous practice areas, including an emphasis in the areas of intellectual property, technology, life sciences, and alternative energy sources.
About Troutman Sanders LLP
Troutman Sanders LLP is an international law firm with more than 600 lawyers and offices located throughout the United States and China. Founded in 1897, the firm’s heritage of extensive experience, exceptional responsiveness and an unwavering commitment to service has garnered strong, long-standing relationships with clients across the globe. These clients range from multinational corporations to individual entrepreneurs, federal and state agencies to foreign governments, and non-profit organizations to businesses representing virtually every sector and industry.
Troutman Sanders lawyers provide counsel and advice in practically every aspect of civil and commercial law related to the firm’s core practice areas: Business Law, Energy and Industry Regulation, Finance, Litigation and Real Estate. With more than 50 practice groups focused on specific aspects of these areas, the firm is defined by its considerable knowledge base and proactive approach to addressing legal and business challenges.
About Dickstein Shapiro LLP
Combining decades of litigation experience with a robust procurement and asset management practice, Dickstein Shapiro’s Intellectual Property attorneys devise strategies to help clients protect IP assets while maximizing their value. We have handled litigations on both the plaintiff side and defense side involving claims from a few million to hundreds of millions of dollars, including successfully defending suits where patent owners sought hundreds of millions in damages and obtaining a judgment in excess of $500 million on behalf of a plaintiff. In addition to litigation, Dickstein Shapiro attorneys develop comprehensive IP programs and strategies encompassing all aspects of clients’ intellectual property needs, including asset management, patent and trademark procurement, licensing, and counseling.