Annual intellectual property law review banquet speech: lessons learned from fifteen years in the trenches of patent litigation.

• Author: McDermott, Rick

I would like to thank Professor Irene Calboli, Professor Michael O'Hear, and the staff of the Marquette Intellectual Property Law Review for inviting me to speak at this year's banquet. When Professor Calboli first extended the invitation, I gladly accepted, thinking what a great opportunity to speak to a group of people--primarily students interested in intellectual property law--about a substantive IP law topic. Then, I started thinking about the possible IP law topics that a group of law students might want to listen to on a Friday night. While I have been out of law school over fifteen years, which was not that long ago, I soon realized that the universe of possible topics was quickly dwindling.

If nothing else, perhaps my fifteen years practicing in the IP field, primarily focused on patent infringement litigation, can impart one or two lessons, and a few good stories, all of which I thought you might enjoy tonight, and which might also enlighten your path as many of you proceed with your own legal practice, in the IP field or otherwise. In that regard, I thought I would comment on a few things that have impacted the nature of my practice over the past fifteen years, including several court decisions as well as the economics of IP, and the economy itself. While I am sure that the word "economy" has become a four letter word to many of you, stick with me on this one--its impact on IP might not be as obvious or perhaps as negative as you might think.

Just over fifteen years ago, and fresh out of law school, I started practicing law in Charlotte, North Carolina, at Bell Seltzer Park & Gibson, a mid-sized IP boutique with just two offices--both in North Carolina. Being the high-tech, electrical IP lawyer that I was, it was only appropriate that the first case I was assigned concerned patents relating to the ultra-pasteurization of egg product. That is right, egg product--egg product that is pasteurized at a sufficiently high temperature so as to impart a shelf life of up to about thirty-five weeks so that your favorite restaurant or fast food joint can safely keep sufficient quantities of the egg product around to serve you and their other customers without fear of salmonella or other harmful bacteria. While the technology was not quite "up my alley," I learned a lot working on that case. We dealt with claim construction issues, infringement issues, invalidity issues, damages issues, reexamination proceedings, reissue proceedings, trial preparation, and more. And by the way, we did most of that without the use of e-mail, the Internet, electronic filing, etc.

I learned one of my first, and perhaps most valuable lessons working on that case--that knowledge and experience comes in all shapes and sizes, and to fully appreciate and take advantage of that knowledge and experience, you have to be open to the various shapes and sizes. While it seemed at first like my four undergraduate years learning about circuits, transistors, capacitors, and the like were going to be wasted as I started swimming in egg product, the experience was invaluable and a great way to kick-off my career as a patent lawyer.

Within a year or so after I started working, the Court of Appeals for the Federal Circuit issued its en banc decision in Markman v. Westview Instruments, (1) which upheld the decision of a district court judge, which overturned a jury verdict based on the jury's improper claim construction. By upholding that decision, the court determined that claim construction is a matter of law, thereby assigning to the judge, not the jury, the sole responsibility for construing or interpreting the meaning of patent claims. While there was a strong dissent within the en banc panel at the Federal Circuit, the Supreme Court unanimously affirmed the decision of the Federal Circuit, indicating that the "decisionmaker vested with the task of construing the patent is in the better position to ascertain whether an expert's proposed definition fully comports with the specification and claims and so will preserve the patent's internal coherence," and thereby also ceding to the judge the determination of evidentiary underpinnings relating to issues of claim construction. (2) Prior to Markman, claim construction determinations generally were made at trial, or sometimes during summary judgment proceedings, well into the timing of the case.

The Markman decision has brought about several procedural changes that over the years have impacted generally the practice of patent infringement litigation and my practice in particular. Shortly after the decision, district courts started holding what have been coined as Markman hearings, or claim construction hearings, typically a pretrial hearing, where a judge, or sometimes a special master assigned by the judge, hears evidence presented by the parties regarding the meaning or construction of disputed terms within the asserted patent claims. During such Markman hearings, a court usually hears intrinsic evidence relating to the patent, its claims, its specification, its file (or prosecution) history. A court also may hear extrinsic evidence, such as expert or lay witness testimony, or evidence from treatises, other publications or documents, etc. A court's decision regarding the meaning of the claim terms often will be determinative of many, if not all, of the disputed issues in the case. Since these hearings often are...