Lessons from a Markman hearing

Hello everybody-

I've been involved with a Markman hearing recently, and it's been a great opportunity to see patents from the "other" side. I thought I'd share some of what (to me, anyway) were the salient points relating to patent prosecution. As always, YMMV.

First off, simplify your claim language. If you don't, the judge will, and more than likely not in a way you are comfortable with. How these hearings work (at least in Judge Brewster's court, U.S. District Court for the Southern District of California) is that both sides propose constructions for the claims of the patent at issue. These proposals go back and forth between the parties and what is not agreed-to is left to argue over in court. Fair enough, right? But in addition to the contested language, even the agreed-to constructions will be analyzed by the Judge and changed if he feels an average juror will not understand it. So, be careful- what you think is "broad coverage" or "wiggle room" in that wonderful claim you just drafted may also be an opportunity for the opposition to eviscerate your patent. Of course, some technologies do not lend themselves to "simple" claims, but keeping claim language as simple as possible will give your client a more-defensible position should the need arise.

Second, keep it short. While it may be that sometimes you need a multi-paragraph claim for any number of reasons, think what a judge is going to have to do to distill that claim down to language the average juror will understand.

Third, watch the preamble. Recent Federal Circuit decisions (see On Demand Machine Corp. v Ingram Industries, Inc., 442 F.3d 1331, March 2006) show a growing tendency to limit claims in light of preamble language, and rightfully so. The gist of these recent decisions seems to be that if you are using the preamble to state a "necessary and defining aspect of the invention," then limitations therein may be applied to the claims.

Finally, use a patent attorney. I understand that patent agents can draft and prosecute patent applications, but keep in mind that those applications (hopefully!) mature into patents, and patent scope is usually decided in court, by lawyers and judges, applying the rules of law. As such, the patent attorneys I know keep abreast of developments in Patent Jurisprudence so that they may better protect their clients' interests.

Take care,
Hal