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Markman Hearing

Markman Hearing. Why is the Markman hearing important? Sequence of events leading up to the Markman hearing Preparation for the Markman hearing The Markman hearing presentation Excerpts from the Osteotech Markman hearing. Why Markman Hearing Is Important.

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Markman Hearing

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  1. Markman Hearing • Why is the Markman hearing important? • Sequence of events leading up to the Markman hearing • Preparation for the Markman hearing • The Markman hearing presentation • Excerpts from the Osteotech Markman hearing

  2. Why Markman Hearing Is Important • Can be case-dispositive, or at least dispositive of infringement issue • Sets direction for balance of case • Opportunity to assist court and benefit client

  3. Sequence of Events Leading Up to Markman Hearing • E.g., N.D. GA Local Patent Rules • Govern timing of contention disclosures • LPR 4.1 • LPR 4.2 and 4.3 • Govern timing of claim construction • LPR 6.1 • LPR 6.2 • Example of Proposed Claim Construction • LPR 6.3(a) • Example of Joint Claim Construction Statement • LPR 6.4 • LPR 6.5(a) • LPR 6.5(b) • LPR 6.6

  4. Preparation for the Markman Hearing • Learn the judge’s practices • Hearing vs. papers • Expert testimony • Tutorial only? • Claim construction? • Time allotted • Claim construction philosophy • How to find out about a judge’s practices • Local counsel • Does judge have published guidelines? • Local patent rules • Judge’s Markman decisions • Positioning yourself for the Markman Hearing

  5. Markman Hearing • Goals • Evidence • Expert testimony • Presentation of your position

  6. Osteotech Patent Claim • Claim 4: • A flowable composition for application to a bone defect site to promote new bone growth at the site which consists essentially of a new bone growth-inducing amount of demineralized osteogenic bone powder in a biocompatible carrier, the carrier being selected from a member of the group consisting of liquid polyhydroxy compound, liquid polyhydroxy compound ester, liquid solution of solid polyhydroxy compound . . . , wherein the polyhydroxy compound is selected from the group consisting of acyclic polyhydric alcohols, . . . monosaccharides, disaccharides, water-soluble or water dispersible oligosaccharides, polysaccharides, polyalkylene glycols and mixtures thereof.

  7. GenSci’s DynaGraft • Demineralized bone composition implanted at bone defect sites • Made using a carrier known as Pluronic F127 – a block copolymer • Has two hydroxyl groups • F127 mixed with water • Issue: is Pluronic F127 a “polyhydroxy compound?” • GenSci: limited to organic molecules having 3 or more hydroxyl groups • Osteotech: organic molecules having 2 or more hydroxyl groups • Issue: is F127 in water a liquid? • GenSci: it’s a gel, not a liquid • Osteotech: it’s a liquid

  8. Osteotech Markman Hearing • “Polyhydroxy” issue • Expert testimony permitted • GenSci called Dr. Eisch • Eisch direct testimony directed to claim terms “polyhydroxy” et. al. • Focus of cross examination: • Establish that intrinsic evidence supported Osteotech construction • Establish that extrinsic evidence also supported Osteotech construction • Establish that he was working from the wrong frame of reference – i.e., an academic chemist was not a POSA

  9. Osteotech Markman Hearing cont’d • “Liquid” issue • Eisch testified that F127 in water was a gel, not a liquid • However, GenSci’s own documents established that it referred to F127 in water as a liquid • Any definition of “liquid” should be consistent with the way GenSci used the term because its employees are the prototypical POSAs • Illustrates the benefits of using your adversary’s own words

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