A Changing Role for the Markman Hearing: in Light of Festo Ix, Markman Hearings Could Become M-f-g Hearings Which Are Longer, More Complex and Ripe for Appeal

• Publication year: 2022

37 Creighton L. Rev. 843. A CHANGING ROLE FOR THE MARKMAN HEARING: IN LIGHT OF FESTO IX, MARKMAN HEARINGS COULD BECOME M-F-G HEARINGS WHICH ARE LONGER, MORE COMPLEX AND RIPE FOR APPEAL

Creighton Law Review

Vol. 37

MICHAEL A. O'SHEA(fn*)

I. INTRODUCTION

Eight years ago, in Markman v. Westview Instruments, Inc.,(fn1) the United States Supreme Court held that claim construction was a matter of law for a judge, not a jury, to decide.(fn2) Although the Supreme Court did not mandate how or when a judge was to make this determination, the Markman Hearing - a pre-trial proceeding focused entirely on claim construction - quickly became common practice in district courts throughout the United States.

The significance of Markman to patent litigation cannot be underestimated. The most hotly contested issue in virtually every patent litigation - claim construction - was removed from the jury and given to the judge. The "certainty" desired by the Supreme Court minimized the risk that a jury would misconstrue the claims, but also shifted the balance so significantly that the judge's Markman Hearing decision can effectively determine the outcome of the trial before it has even begun.(fn3)

To be sure, problems remain in the post-Markman world. For example, (1) a high reversal rate of claim construction decisions by the Court of Appeals for the Federal Circuit results in uncertainty even after trial, (2) litigating patents continues to be expensive, and (3) court resources are routinely wasted by empanelling juries only to re-try the same case in the future.

In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki, Co., Ltd ("Festo IX"),(fn4) the United States Court of Appeals for the Federal Circuit ruled that prosecution history estoppel, like claim construction, is solely for the judge to decide. Interestingly, the Festo IX decision may have created an opportunity to use Markman Hearings to solve many of today's problems in patent litigation. Specifically, a district court judge can now decide all questions of law in a single hearing and allow a common interlocutory appeal of these adjudicated issues to proceed to the Federal Circuit. Then, after the Federal Circuit has ruled on the questions of law, a focused jury trial can be conducted, after which only limited issues would be appealable. Such a new procedure would increase certainty, decrease cost and maximize judicial resources.

II. THE CLAIM CONSTRUCTION, PROSECUTION HISTORY ESTOPPEL, AND INEQUITABLE CONDUCT DETERMINATIONS SHOULD EACH BE MADE BEFORE TRIAL

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki, Co., Ltd. ("Festo IX")(fn5) holds that the prosecution history estoppel determination is a question of law solely for the judge.(fn6) This is in line with Markman v. Westview Instruments, Inc.(fn7) and Gardco Mfg., Inc. v. Herst Lighting Co.(fn8) which, respectively, reserved claim construction and inequitable conduct for the judge.(fn9) However, neither the Supreme Court nor the Federal Circuit have decreed the timing of any of these determinations. As explained below, the best time for each determination is before trial.

A. CLAIM CONSTRUCTION GENERALLY OCCURS BEFORE TRIAL

District court judges have employed a variety of formats and procedures in holding Markman Hearings. For example, the United States District Court for the Northern District of California, through its Patent Local Rules, prescribes certain time and substance guidelines related to claim construction.(fn10) Specifically, these rules dictate that claim construction occur prior to trial, beginning with an exchange of proposed terms and claim elements for construction no later than sixty-five days after the initial case management conference.(fn11) Although not every district court has included a Markman Hearing schedule in its local rules, virtually all Markman Hearings are held before trial.(fn12)

B. THE PROSECUTION HISTORY ESTOPPEL DETERMINATION SHOULD BE MADE BEFORE TRIAL

An infringement analysis involves two steps: (1) construction of the words in a patent claim, and (2) comparison of the construed claim to the accused product.(fn13) While, under Markman, the first step is reserved solely for the judge, the second step of the infringement analysis is a question of fact for the jury.(fn14) In order to prove infringement, the patentee must establish the accused product contains every element of a claim.(fn15) The patentee proves literal infringement when each claim element is found to be literally present.(fn16)

However, there are instances where an element is not literally present in the accused product, but the differences between the element and the product are so insubstantial that fairness requires a finding of infringement. The doctrine of equivalents permits a finding of infringement in such a situation.(fn17)

In short, the doctrine of equivalents permits the patentee to expand the scope of a claim beyond its actual words. However, in the process of obtaining the patent at the Patent Office, a patentee may have narrowed the claim from its original scope by distinguishing the claim from prior art cited during prosecution. In narrowing the claim scope, the patentee may have effectively admitted that the claims are not broad enough to cover the accused product. In such a situation, under the doctrine of prosecution history estoppel, the patentee is not permitted to expand the scope of the claims. Thus, when prosecution history estoppel applies to a claim element, the doctrine of equivalents is not available to prove infringement of that element.

As with the comparison of the literally interpreted claims to the accused product, the determination of whether a claim element is present by the doctrine of equivalents is a question for the jury.(fn18) During the jury trial, both parties will present evidence regarding the similarities (or differences) between the claim element and the accused product. Generally, each party will also present testimony by expert witnesses trained in the technical field at issue regarding the doctrine of equivalents.

The Court in Festo IX held that it is the judge who decides whether prosecution history estoppel applies to a claim element and therefore the judge determines whether a doctrine of equivalents analysis can proceed.(fn19) The timing of the judge's prosecution history estoppel determination is important in view of the impact that it has on the evidence regarding the doctrine of equivalents presented at trial. Generally, there are three time periods in which the prosecution history estoppel determination can be made: before, during or after trial. Determining the applicability of prosecution history estoppel before trial is the most sensible of these options.

If a judge determines that prosecution history estoppel applies to a claim element, then the jury need not hear any evidence regarding equivalency of that element because it is not at issue. If the prosecution history estoppel determination is not made prior to trial, then the jury will hear evidence relating to both literal infringement and infringement by the doctrine of equivalents, even if the latter becomes unnecessary by a mid or post-trial judicial determination. The mischief and misunderstanding that could result is manifest.

If the judge decides, mid-trial, that prosecution history estoppel applies, then it is likely that the jury will hear equivalency evidence solely from the plaintiff who already has put on its evidence. Because the issue has been mooted, the defendant will have no need for rebuttal and would not present any evidence. Furthermore, in such a situation, the jury would be expected to compartmentalize the evidence already heard such that its ultimate determination of infringement does not include the evidence for equivalency.

Moreover, after trial, if the judge were to determine that prosecution history estoppel applied, then a finding of infringement may be unfairly reversed. For example, rather than coming to a specific determination regarding literal infringement, the jury may have taken what appeared to be the safer route and found infringement under the doctrine of equivalents. The judge's subsequent prosecution history estoppel determination would reverse such a finding, even though the jury may well have found literal infringement if it was precluded from finding infringement under the doctrine of...