Claim Construction Order

1. Claim Construction Order An order issued by the court in which the court construes the meaning of disputed terms in the claim(s) of the patent(s)-in-suit JEN ROBINSON - CLAIM CONSTRUCTION ORDER 1

2. Why Are Terms Disputed? • Usually because of INFRINGEMENT: - the PO wants a broad construction to cover the accused device, and - the AI wants a narrow construction to make the patent not cover the accused device. • Sometimes because of VALIDITY : - the PO wants a narrow construction to prevent a finding of invalidity over the prior art, and - the AI wants a broad construction to invalidate the patent in light of prior art. JEN ROBINSON - CLAIM CONSTRUCTION ORDER 2

3. Markman Hearings • Markman hearing is a synonym for claim construction hearing. • Markman was the famous case holding that claim construction is a matter of law for the court. Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), affirmed 517 U.S. 370 (1996). • The hearing results in a claim construction order. • The court holds the hearing, usually months before trial, to • let the parties explain their arguments about how the claims should be construed, and • narrow the issues for trial, and therefore maybe • promote settlement. Some jurisdictions (NDCal was the first) have special LOCAL RULES for patent cases, which specify how claim construction is handled. (Part 4) JEN ROBINSON - CLAIM CONSTRUCTION ORDER 3

4. Experts at Markman Hearings • Some hearings are like motion hearings: there is only oral argument by attorneys, and no testimony is taken. • Other hearings involve a tutorial by an expert – there is no direct examination, the expert just lectures. The other side may cross-examine the expert or offer its own expert witness. • Experts* often draft declarations which the attorneys then reference in their the briefs. JEN ROBINSON - CLAIM CONSTRUCTION ORDER 4