Patent Claim Construction and Markman Hearings

Patent Claim Construction and Markman Hearings provides in-depth guidance to this growing and crucially important area of patent practice. As one judge put it, “To decide what the claims mean is nearly always to decide the case”.

In 1995, the Supreme Court ruled in the Markman case that the determination of the scope of a patent claim is a question of law exclusively for the judge to decide. Subsequently, most judges have held separate hearings, usually called “Markman hearings,” to decide the scope of claims. Patent Claim Construction and Markman Hearings provides in-depth guidance to this growing and crucially important area of patent practice by walking you through the entire process from what needs to be done to prepare for a hearing, how to best employ expert witnesses or technical advisors, what aids can be used to educate the court on what are often very complex scientific questions, and how to most best appeal unfavorable rulings.. In addition, the book includes a comprehensive chapter on the local court claim construction rules of the various District Courts that have adopted them.

Patent Claim Construction and Markman Hearings helps you to understand:

• How courts decide “what a person of ordinary skill in the field of the patent invention would understand the language of the claim to mean”
• The impact of prior constructions on a new hearing
• How to decide what claims or claim elements should be construed by the court
• What constitutes intrinsic and extrinsic evidence in interpreting the claim
• At what point in the overall patent proceeding a construction hearing should be held, and
• What are the rules that will be used when a contested construction is an issue in an appeal to the Federal Circuit.