October 23, 2018

Court Introduces Alternative to Markman Hearings

A “Markman” hearing refers to the hearing held by a district court to determine the meaning and scope of the claims at issue in a patent litigation.  As every patent litigator will tell you, the outcome of the Markman hearing often, if not, usually determines the outcome of the case.  Cases are won or lost based on how the court construes key claim terms. Now, former Chief Judge Crabb of the Western District of Wisconsin has instituted a fundamental change in how and when a court will construe a patent claim’s terms.  Indeed, she has done away with stand alone Markman hearings and will construe terms as part of summary judgment motion practice.  If this practice is followed by other courts, it will result in a sea change in the patent litigation process.

The court in Dashwire v Synchronoss  for “reasons that are irrelevant to this order and not subject to input from counsel” changed the procedures for construing claims and deciding summary judgment motions in patent lawsuits.  If this change is followed by other district courts it could have a major impact on patent litigation.  In particular, Judge Crabb will now construe terms as part of summary judgment motions practice.  The court will not hold a stand-alone claims construction hearing and will not issue an order construing claims.  Instead, if any party wants the court to construe a claim, it must make that request and offer its proposed construction as part of its motion for summary judgment.   In order to accommodate this procedure, the court moved its long-standing summary judgment motion one month forward, so that it will fall about seven months before trial.  The Order also provided that the court will decide whether to schedule oral argument in a particular case, and each party must include in its summary judgment pleadings which topics it is requesting for oral argument.  The Order also provided guidelines on how long and what topics could be presented during oral argument.

Please let me know on what you think about J. Crabb’s decision to make claim construction part of summary judgment motions.

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