Markman Hearing: What Is It?

A Markman hearing is a court hearing in which a judge determines the meaning of disputed words in a patent infringement lawsuit. A Markman hearing is also known as a construction hearing. When a judge determines the meaning of the disputed words, it's called claim construction.

To determine patent infringement, a jury must fully understand the definition of words used in the patent. A patented invention must be described with precise wording on its patent application. This wording and the defined definitions from the Markman hearing is what jurists use to determine if patent infringement has occurred.

The name "Markman hearing" comes from a 1996 Supreme Court case Markman v. Westview Instruments, which decided that judges were better than juries in determining claim construction.

Judge and Jury Responsibilities in a Markman Hearing

In a patent infringement case, the judge and the jury have very different responsibilities. In a typical jury trial case, the jury is tasked with finding the facts, while the judge's job is to interpret the law.

In a Markman hearing, the judge is tasked with claim construction or defining important words in a patent description. Though a judge will help to define terms, he will not decide in a Markman hearing to include or exclude processes or products that are part of the patent infringement. A jury must decide which processes and products to include and exclude.

Intrinsic or Extrinsic Evidence in a Markman Hearing

There are two types of evidence that might be heard in a Markman hearing: intrinsic and extrinsic.

Intrinsic Evidence

This type of evidence is evidence that is related to the case under litigation for patent infringement. Examples of intrinsic evidence in a Markman hearing include:

  • Patent application summary

  • Correspondence between patent applicant and patent examiner

Both of these pieces of evidence will help to show the thinking of the inventor in why he used the terms that he did and the given definitions of key words.

Extrinsic Evidence

Any evidence that is used in a claim construction case that isn't related to the patent under litigation is considered outside or extrinsic evidence. Examples of extrinsic evidence in a Markman hearing include:

  • Standard dictionary for non-technical words

  • IEEE dictionary or encyclopedia for technical terms

Timing of a Markman Hearing

In Markman v. Westview Instruments, the Supreme Court didn't define a specific process that must be followed to decide claim construction. Different courts have developed different processes over the years.

Some districts decide construction claims early on in the case before the patent infringement is discussed. Other courts will hear all of the evidence presented and then construe the claim and instruct the jury at the end of the case.

For example, compare the rules for a Markman hearing in the California Northern District Court and the California Southern District Court.

California Northern District Court

"4. CLAIM CONSTRUCTION PROCEEDINGS

4-6. Claim Construction Hearing

Subject to the convenience of the Court's calendar, two weeks following submission of the reply brief specified in Patent L.R. 4-5(c), the Court shall conduct a Claim Construction Hearing, to the extent the parties or the Court believe a hearing is necessary for construction of the claims at issue."

California Southern District Court

"4. CLAIM CONSTRUCTION PROCEEDINGS

4.5 Claim Construction Hearing.

Not later than twenty-eight (28) days after service of responsive briefs and subject to the convenience of the court's calendar, the court will conduct a Claim Construction Hearing, if the Court believes a hearing is necessary for construction of the claims at issue. The court may also order in its discretion a tutorial hearing, to occur before, or on the date of, the Claim Construction Hearing."

Even within one state, there are differences in how and when Markman hearings are held. To further illustrate this point, this is how Georgia handles Markman hearings.

Georgia Northern District Court

"LPR 6: CLAIM CONSTRUCTION PROCEEDINGS

LPR 6.6. Claim Construction Hearing

Subject to the convenience of the Court's calendar, the Court shall conduct a Claim Construction Hearing to the extent the Court believes a hearing is necessary for construction of the claims at issue."

Every local court has its own rules. If you're facing a Markman hearing in your district, be sure to find out how your court hears cases. As well, if you're facing a patent infringement case, you may want to consult with an experienced patent attorney.

Tips For Handling a Markman Hearing

A Markman hearing isn't an easy case to handle, even for experienced patent infringement attorneys. These tips will help you to understand what is needed in a Markman hearing and the steps that your attorney might take when entering a Markman hearing.

Know Your Judge

Judges are people too. They have quirks, faults, and strong suits. Knowing what those qualities are before starting your Markman hearing will make it much easier to try your case. A major concern for many lawyers is whether or not the judge is versed in patent law. Different terms and explanations will be necessary if the judge isn't experienced in patent law.

As well, many patent infringement cases may be about highly technical inventions. A judge who isn't very tech-savvy may struggle to hear the case and understand. Changing your tactics and communication will make it easier for the judge to understand.

Understand the Tech Tutorial

A tech tutorial is a presentation with animations and voiceover that explains the invention in question in the Markman hearing. Some Markman hearings require tech tutorials while others do not.

As well, each judge has his own way of hearing the tech tutorial. Some judges like to view the tech tutorial in private, while other may want to watch it live in court and ask questions of the attorneys or experts.

Practice!

If you're an attorney who is new to Markman hearings, a mock Markman hearing could help you to practice your skills and encounter possible situations in which you might find yourself.

A practice round might be as theatrical as having someone stand in for the judge and provide responses or just preparing oral arguments ahead of time to practice in the mirror. For major Markman hearings, you could even request the help of a retired judge to hear your practice round.

Practice makes perfect. By the time you reach the courtroom, you shouldn't be using notes to present your case. You should know your argument so well it's practically memorized. Practice is the time to fail, not during the real thing.

Use an Expert

An expert isn't always necessary in a Markman hearing. Experts will sometimes present during a Markman hearing and sometimes present a report later on in the patent infringement trial.

Working with an expert from the beginning ensures that you're both on the same page and presenting the same argument throughout the patent infringement case. Consistency with your expert is very important.

As well, some experts have never participated in a patent litigation case and may be nervous. Prepare the expert to make sure he or she knows what will happen and what is expected during the trial.

Know the Must-Wins

Every case has a few points that are the crucial or "must-win" points. If you can take the must-win points, you're more likely to see a win overall.

Part of identifying your must-win points is also preparation and practice. Identifying these points will help you to identify how to win the case overall. During this process, you'll likely also identify some landmines or points that could blow your whole case. Learn how to avoid those places and redirect to the must-win points.

During this process, you should also find points where concession is OK. Knowing which points won't affect you allows you to look willing to compromise without actually losing anything important.

Perfect Your Brief

In most Markman hearings you'll submit a brief before standing in front of the judge. This is your opportunity to tell the judge about the technology and encourage the outcome that you seek.

Take your time in preparing the brief and make sure that it's perfect before submitting it. Your brief might be the judge's first introduction to you, the technology, and your client. Make sure that the language is welcoming, easy to read, grammatically correct, and flawless in all ways.

Prepare Graphics

Without graphics, a Markman hearing is dead. The vast majority of patent litigation cases deal with products, processes, or inventions that cannot be understood without drawings or graphics. A sketch on a napkin won't do. Make sure to take the time to prepare graphics. If an artist needs to be hired, don't hesitate.

Good graphics can make the difference between the judge understanding or not, which in turn can mean the difference between you winning your case or not.

Work With Opposing Counsel

This might sound like an odd tip, but judges will be happy to discover that the opposing counsels have worked together to resolve at least parts of the case.

Try to work with the opposition before the beginning of the case to find out if the two parties can agree on certain terms and make the judge's job slightly easier.

Litigation Strategy for a Markman Hearing

Because many judges don't have the expertise to understand the technology discussed in patent infringement cases, the attorney with the better Markman hearing presentation is often the one to win. Subtleties are easily lost during these complicated cases, and the Markman hearing presentation is of utmost importance.

If the Markman hearing is taking place at the beginning of the patent infringement case, it can also sway the judge's' opinion and understanding for the entire case.

During the Markman hearing, the attorney takes on the role of educator. Teaching the judge (in a non-condescending way) about the technology, the invention, and the language used to describe that invention.

Two opposing strategies are commonly used:

  • Step away from the technology and focus on the simple and plain meaning of the words that were used in the patent claim.

  • Concentrate on the technical aspects of the invention within the context of the patent claim.

Both strategies have been known to work. Which strategy you choose will depend on the case and on the personality of the judge who is hearing the case.

No matter which strategy is used, an overarching idea is to limit the number of terms under debate during the case. The discussion in the Markman hearing should be limited to as few terms as possible. This will prevent the judge from being overwhelmed.

Graphics are also extremely helpful here. There should be one graphic that synthesizes all of the necessary information that the judge needs. This graphic will make it easy for them to take in all of the necessary information. This one graphic should lead the judge towards your case's point of view and present the information in a simple and understandable way. Consider this graphic the core of your case.

Is a Markman Hearing Actually Required?

There are those who have argued that Markman v. Westview Instruments didn't actually make Markman hearings a requirement in patent infringement cases. There is also so much room for interpretation in when and how Markman hearings are heard that some Markman hearings have practically no effect on patent infringement cases.

As described earlier, when a Markman hearing takes place is up to the judge and the local court's rules. In some cases, judges might even interpret claims in a Markman hearing as post-trial motions. This satisfies the Markman hearing requirement with minimal to no effect on the actual patent infringement case.

In general, the trend for most courts and judges is to hear Markman with as few live appearances as possible. Most cases are decided upon paper records. The trend towards using Markman hearings may be a short-lived phenomenon.

Because the Markman decisions don't require a formal hearing with a set date, oral argument, and witnesses, the trend is to not do that. As local courts become aware that the Markman requirement is met with post-trial motions, the trend is moving towards doing it that way. This puts less stress and time requirements on the local courts.

For Markman hearings to be most beneficial and for judges to be able to make decisions better than juries can, they must take the time they need to hear the arguments of advocates, interpretations, and information from both sides.

For example, LRC Electronics, Inc. v. John Mezzalingua Associates, Inc., made an important distinction as to when and if a Markman hearing is necessary. The defendant in LRC Electronics, Inc. v. John Mezzalingua Associates, Inc., requested a Markman hearing and argued that it should take place before the court ruled on summary judgment and should include expert testimony. The defendant believed that the Markman hearing results could prompt an offer for a settlement.

The court decided that the Markman decision from the Supreme Court didn't indicate that a Markman hearing must take place pre-trial or pre-summary judgment. As well, the court decided that a Markman hearing is only necessary if the court needed expert opinion to interpret or understand a term. This can only be decided after the intrinsic evidence has been heard and if the term remains ambiguous at that time.

In LRC Electronics, Inc. v. John Mezzalingua Associates, Inc., the court found that after hearing the intrinsic evidence and careful consideration, the meaning of the claim term in the case was ambiguous.

Similarly, in Aspex Eyewear v. E'lite Optik, the court found that, "[i]n cases such as this one, where the technology is accessible to the court and the claims are relatively straightforward, a Markman hearing is unnecessary."

Another important recent case is between Worlds and Activision. The two gaming companies are battling over whether or not Activision has infringed upon Worlds patents. The judge in this case decided to hold a Markman hearing. At the hearing, which was held on October 3, 2014, they discussed claim construction and the meaning, intent, and indefiniteness in the 11 disputed claim terms.

Inter Partes Review or Inter Partes Re-examination

In patent litigation, there are two ways for a claim to go: inter partes review or inter partes re-examination. This deals with estoppel, which means the end of a case which cannot be heard again.

In an inter partes re-examination, all appeal rights must be terminated before an estoppel effect takes hold. Inter partes re-examination can take years to go through an examiner, board of appeals, and Federal Circuit Court of Appeals. It can take five or more years for the estoppel to take effect.

In comparison, an inter partes review can resolve issues much more quickly. An inter partes review cannot be filed after a delay. There is also a lower standard of proof required for the petitioner in an inter partes review.

Estoppel isn't triggered in an inter partes re-examination until patentability has been "finally determined," while inter partes review triggers estoppel upon "final written decision," making the later a much more efficient process.

Will Inter Partes Review Replace Markman Hearings?

Unlike Markman hearings, inter partes review can be reviewed through an appeal to the Federal Circuit Court before trial. This can benefit the court that will then hear the patent litigation case.

An inter partes review may also result in a settlement, letting the parties avoid going to court.

A more uniform approach to claim construction could enhance the patent system and make patent litigation simpler.

Frequently Asked Questions

  • Is a Markman hearing necessary?

Whether or not a Markman hearing is necessary is up to the district court to decide. The decision in Markman v. Westview Instruments doesn't mean that a Markman hearing is required, only that a judge, not a jury, decides on patent claims. This means that many district courts decide that a Markman hearing isn't necessary. When the paper records provide all of the necessary information, this is an easy interpretation to make.

A Markman hearing can take many forms, and many attorneys and judges prefer the paper-only type of Markman hearing instead of a live hearing with multiple witnesses that spans multiple days. Some courts will allow experts to provide information without cross-examination or have appointed their own experts.

  • What can be presented at a Markman hearing?

Once a court has decided how to hold the Markman hearing, then it must be decided what can be presented at the hearing. The intrinsic evidence often includes claims, written descriptions, and prosecution history. What intrinsic evidence to include is usually straightforward.

The question of what to include usually surround the extrinsic evidence. Extrinsic evidence is defined as "all evidence external to the patent and prosecution history, including inventor testimony, dictionaries, and learned treatises."

Extrinsic evidence is to be used to assist in the claim construction, but not to vary or contradict the terms of the claim.

The Federal Circuit's decision in Vitronics Corp. v. Conceptronic, Inc., has helped to shape the decision around extrinsic evidence. This case took a harsh stance on extrinsic evidence, saying that it was to be used only when there was ambiguity in the meaning of claims in the intrinsic evidence. Many courts have taken up a similarly strict view of intrinsic evidence.

  • Should you use an expert in a Markman hearing?

A major question that faces patent infringement lawyers is whether or not to use an expert during the Markman hearing. This decision, of course, is regulated by some outside factors. An expert can only supply testimony during a Markman hearing if the judge allows expert testimony and if the Markman hearing is live. Many judges will do paper-only Markman hearings. Sometimes, expert testimony can be included in the paper-only Markman hearing, but not always.

If an expert can testify during a Markman hearing, should you use one? Experts are useful when it is necessary to explain a complex subject that may be technically complicated for someone without technical knowledge of that specific subject. Experts might also be able to provide background information for judges.

A few reasons to use an expert are:

  • Provide testimony to support your case.
  • The other side is using an expert.
  • The expert is outstanding and very convincing.
  • To establish the experts credential and credibility for the rest of the case.
  • An expert could begin to establish that the patent is invalid, preparing for a validity attack later on in the case.

Using expert testimony isn't always right for every case. Here are a few reasons that you might not want to use expert testimony:

  • Conflicting testimony from experts may confuse the court.
  • Conflicting testimony from experts may make a simple case complicated.
  • The cost of hiring experts makes the case more expensive.
  • Experts aren't perfect; they may not perform well under pressure.
  • An attorney loses control by placing faith in an expert.

What an expert can do should be weighed when deciding whether or not to hire one. If all an expert can do is read intrinsic evidence and supply an opinion on minor details, the risks may not be worth the potential rewards. There may be better ways to make your case than with expert opinion. 

If you need help with a patent infringement case or a Markman hearing, you can post your legal need on UpCounsel's marketplace to look for an experienced patent infringement attorney. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.