A Markman hearing is a pre-trial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant keywords used in a patent claim when patent infringement is alleged by a plaintiff. It is also known as a “Claim Construction Hearing”.

Markman hearings are important since the court determines patent infringement cases by the interpretation of the claims. A Markman hearing may encourage settlement since the judge’s claim construction finding can indicate a likely outcome of the patent infringement case as a whole. Markman hearings are before a judge and generally take place before trial.

Since the patent claims specify what constitutes and does not constitute protected intellectual property, this form of hearing—also referred to as a claim construction hearing—is crucial in resolving questions of patent disputes. However, a jury decides whether or not there was infringement because they are the fact-finders. This includes situations where the doctrine of equivalents is being applied. The judge will decide how the claims should be understood in his or her capacity as the legal arbiter. Therefore, the judge will evaluate the extent of the patent holder’s rights through claim construction. The jury instructions will take into account the judge’s ruling in the Markman hearing.

The term “Markman hearing” originated from a 1996 ruling by the Supreme Court of the United States, which put an end to a protracted debate about whether judges or juries should decide what claims mean. The right to a jury trial is protected under the Seventh Amendment to the United States Constitution. This ensures that a jury will ultimately determine whether there has been infringement for the patentee. The controversy over whether the Seventh Amendment compelled juries to address the fundamental issue of claim construction did not, however, actually arise until the patent regulations were changed to include claims in 1870. At the time the Seventh Amendment was established, patents did not even include claims. Eventually, the 1996 judgment determined that judges, who have experience evaluating the written language of complex contracts and statutes, are better qualified than juries to establish the meaning and definition of words in patent claims.

Any patent litigation begins with the formulation of the patent claim. The court must establish the scope and significance of the asserted patent claims before looking at the allegedly infringing item. When undertaking this assessment, the court must consider both intrinsic and extrinsic evidence

Materials provided as a part of the patent application are referred to as intrinsic evidence. This comprises the claims, executive summary, and written description contained in the patent application itself, written or verbal correspondence between the patent applicant and the patent examiner that includes the prosecution history, prior art cited in the patent application, and previous comparable patents and their prosecution histories.

Any evidence that originates from outside sources is considered extrinsic. Extrinsic evidence in Markman hearings may include: definitions from dictionaries for common terms, for technical words, consult encyclopedias or engineering dictionaries, journals, or other scholarly works that cover the technology, the patent applicant’s testimony, or expert opinion

Extrinsic evidence is helpful for education and background knowledge on the contested invention, even though courts generally look at intrinsic evidence to aid in claim construction.

Patent claim construction rules

In Phillips v. AWH Corp, the Federal Circuit 2004 established the current method for construing patent claims. This case established a foundation for claim formation, as did later judgments that cited Phillips. The correct claim construction cannot be determined using a predetermined process. Instead, a set of criteria are applied to choose the right construction.

Recently, The U.S. Patent Office finalized a regulation to align its claim construction guidelines with the Federal Circuit’s Phillips ruling. The Patent Office will interpret patent claims for inter partes review (IPR), post-grant review (PGR), and covered business method patents (CBM) procedures in accordance with this rule, which is outlined in 37 CFR 42.100. It is crucial to remember that this regulation will only apply to petitions submitted after it has been adapted.

Need of a Markman hearing?

The district court has the discretion to determine whether a Markman hearing is required. A Markman hearing is not necessary as a result of the Markman v. Westview Instruments ruling; rather, patent claims are decided by a judge rather than a jury. As a result, a lot of district judges rule that a Markman hearing is not required. This is a simple interpretation when the paper records provide all the relevant details.

A Markman hearing can be conducted in a variety of ways, but many lawyers and judges prefer the paper-only format to a multi-day live hearing with numerous witnesses. Some courts will permit specialists to testify without being questioned themselves or by outside witnesses.

The Supreme Court did not provide a particular procedure that must be followed to decide claim construction in Markman v. Westview Instruments. A Markman hearing is often scheduled at an advanced stage of the trial. A jury can then decide if there has truly been patent infringement once the judge defines the definitions of specific terms used in the patent during the hearing.

Over time, several courts have created various procedures. Some districts reach early decisions on construction claims before talking about potential patent infringement. Other courts will hear all of the evidence, interpret the claim, and then give the jury instructions at the conclusion of the case.