[Panel 4] WG5 Commentary on the Markman Process and Claim Construction (2d Edition)

Date: 
Thursday, March 28, 2019 - 1:45pm to 3:00pm
Panel Description: 

In 2010 a Sedona Conference working group conducted a study on the Markman process with the stated goal of articulating best practices for conducting claim construction. The 22 best practice recommendations came after exhaustive efforts to elicit comment and input from lawyers, academics and judges on what was believed to the optimal use of this important procedural step in a patent litigation. It was an important piece of work that helped to bring focus on what had become a confusing array of differing approaches among the various district courts in the years since the Supreme Court’s decision in Markman v. Westview Instruments, 517 U.S. 370 (1996).

Now we are convening another Sedona Conference team to take a look at the claim construction process with a slightly different focus. We will be exploring the issue of how the claim construction process has evolved—specifically what procedures and practices have been generally accepted among the district courts and which suggestions that seemed to have support in 2010 have not found favor in practice. In addition, we will make an effort to determine what procedures have been modified to fit the needs of the claim construction process and which of them have been abandoned or substantially revised in order to address issues of procedural or substantive law that have arisen in the intervening nine years. We will also take a close look at the appellate process in patent cases to determine whether the historically high reversal rates in claim construction cases that existed in 2010 still continues in recent times. Our efforts will draw on the collective knowledge of those who conduct patent litigation in the major venues throughout the United States on a regular basis and have knowledge of what claim construction looks like in places as geographically diverse as Marshall, Texas, Wilmington, Delaware and San Jose, California.

From this review of what has been implemented since the seminal 2010 Markman report we will gain a better understanding of the realities of today’s patent litigation environment and the demands being made on trial judges and trial lawyers alike. We will also develop some insights on efficiencies and innovations in the process that were not envisioned when the original study issued. Hopefully by sharing this information we will be able to provide a set of new best practices that will provide useful guidance to the patent litigation community going forward.