Re: New Pacer--NOTICE OF FILING DEFENDANTS’ TECHNOLOGY TUTORIAL
in response to
by
Mosaic ImmunoEngineering is a nanotechnology-based immunotherapy company developing therapeutics and vaccines to positively impact the lives of patients and their families.
Message: Re: New Pacer--NOTICE OF FILING DEFENDANTS’ TECHNOLOGY TUTORIAL
This is a good general overview including request for tutorial
AIPLA
———————
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION
241 18
th
Street, South, Suite 700, Arlington, VA 22202 Phone: 703.415.0780 – Fax: 703.415.0786 – www.aipla.org
February 2, 2007
Richard Braman
Executive Director
The Sedona Conference
Dear Mr. Braman:
The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to
offer substantive comments to The Sedona Conference® Report On The Markman Process, June
2006 Public Comment Version ("draft Report").
AIPLA is a national bar association whose more than 17,000 members are primarily lawyers in
private and corporate practice, in government service, and in the academic community. AIPLA
represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or
indirectly in the practice of patent, trademark, copyright and unfair competition law. Because our
members represent both patent owners and users of intellectual property -- both small and large
clients and both plaintiffs and defendants -- AIPLA is uniquely positioned to offer a balanced
perspective on Markman hearings and claim construction issues.
AIPLA appreciates the efforts of the Sedona Working Group on Markman Hearings and Claim
Construction (WG5) in formulating the draft Report. The Report contains helpful recommendations
and guidance that can serve to advance the handling of patent cases in a fashion calculated to
achieve balance and fair disposition with improved judicial efficiency. However, we note that not every
recommendation included in the draft Report is ideally suited for every patent case. A risk exists that
judges will unadvisedly attempt to “squeeze” some patent cases into the processes outlined by the
draft Report. We recommend additional commentary be added to the Report to make this clearer. We
believe the Report’s principles must ensure enough flexibility so that judges can do a fair and balanced
job of scheduling and handling Markman hearings and can adapt their scheduling orders to the
circumstances of a specific case.
Courts should remain able to work with counsel to create a
schedule and a hearing process that provide the court with the appropriate tools with which to
"properly" construe claim terms, and that allow the parties some flexibility of coordinating discovery
and other pre-hearing matters.
Accordingly, we offer the following specific comments, within the structure and context of the
draft Report, on items that may benefit from further discussion.
Introduction
The overall concept of the draft Report -- streamlining the Markman process -- is a laudable
goal and the draft Report includes helpful recommendations and guidelines. It is worth noting,
however, that the draft Report encompasses more than the Markman process and is directed further to
scheduling orders in patent cases, generally. In some respects, scheduling orders in patent cases
affect the Markman process. At other times they do not. For aspects of scheduling orders that do not
relate to the Markman process, we recommend deleting specifics such as notice of reliance on
opinions of counsel, expert disclosures, times, dates, quantities, etc. This will achieve the Report’s
objective to provide courts with practical guidance while encouraging appropriate flexibility and
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avoiding an overly-prescriptive result from courts applying requirements that may not be appropriate in
specific cases.
While the draft Report contains helpful guidelines and acknowledges that “one size does not fit
all,” it also may be useful to discuss alternative practices with their advantages and disadvantages.
For example, the Federal Circuit Bar Association has issued guidelines for patent claim construction
(Guidelines for Patent Claim Construction: Post-Phillips—the Basics of a Markman Hearing by
Federal Circuit Bar Association Patent Litigation Committee, http://www.law.gmu.edu/fcbj/) that include
such a discussion. Identifying alternative practices could improve the process and avoid potential
confusion by courts that are less experienced in patent litigation.
Principle 1: The Parties Should Work Together Prior to the Initial Case Management
Conference to Facilitate the Markman Process
We agree with this principle in general. Under this principle, the Report suggests two
scheduling orders with specific actions and dates. With respect to the meeting 15 days prior to the
case management conference, in some cases, that meeting may occur too early for a meaningful
discussion of many of the proposed topics because they deal with the substance of the case before
the accused infringer may understand the infringement contentions and before the patent holder may
understand the invalidity contentions. This is especially true where the filing of suit is the accused
infringer’s first notice of the infringement allegations. We suggest that this section call for the 15-day
meeting as a means for the parties to discuss applicable issues to the extent possible, but it should
also emphasize the need for flexibility. The section should acknowledge that 15 days before the case
management conference may be too early to arrive at a conclusive set of Markman procedures and
that an additional and later case management conference may be needed to finalize the procedures.
The need for a technical tutorial or a technical advisor is within the discretion of the court, and
this suggestion should be framed that way.
Principle 2: The Parties Should Be Required to Disclose and Exchange Preliminary
Infringement and Invalidity Contentions
Preliminary infringement and invalidity contentions are good ideas that help focus the
Markman process. However, depending on the complexity of the case, the proposed time frames for
them may need to be modified and the parties should have an opportunity to suggest such timeframes
as part of their Rule 26(f) report. For instance, it may be desirable to have some discovery before
providing these contentions. Setting the disclosures too early may deprive a party of the opportunity to
discover information necessary for the contentions. An example may be the infringement of a process
patent where the precise process used by the alleged infringer cannot be determined without
discovery.
Depending on the circumstances of a particular case, it may be useful to employ an
approach that encourages flexible timeframes for making preliminary contentions or for amending and
supplementing preliminary contentions. In its discussion of the 15/55 day rule, the Report should
stress the need for sensitivity to situations where such rigid, compressed dates may exact an
unwarranted penalty, and should permit relaxation as applicable. In some courts, the “preliminary”
infringement and validity contentions are considered to be “final” subject only to modification based on
a Markman ruling or evidence that was otherwise not reasonably accessible at the time the
contentions were made. Because of the potential “finality” of these contentions, any scheduling order
controlling the Markman process should take these issues into consideration.
Also, requiring the patentee to research and disclose early in a litigation the absolute
conception and reduction to practice dates for each asserted claim may in some instances prove
beneficial and increase the efficiency of discovery. In other cases, however, the constructive priority
dates may be sufficient and delving into the facts regarding earlier priority activities would be
unproductive. Again, we suggest allowing for a more flexible approach in this regard.
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Principle 3: The Parties Should Be Required to Develop and Exchange Specific Lists of
Disputed Claim Terms
This principle is a good idea. It also may be helpful to analyze how various courts have
implemented this principle and suggest a procedure for implementing it. The local patent rules for the
Eastern District of Texas offer some procedures. See E.D. Tex. Patent Rules 4-1 through 4-5. In
addition, some courts require the parties to cooperate in assembling the intrinsic evidence into a joint
submission to the court, allowing the parties and the court to use a common set of Bates numbers to
make citations in briefs uniform and to limit the papers needed to be filed with the court.
Principle 4: Neutral Technology Tutorials for the Court put Together By All the Parties are
Often Helpful and Sometimes Necessary
This is a laudable principle. Having a tutorial may increase the efficiency of the Markman
process and the court’s understanding of the relevant technical principles. We suggest, however, that
this principle both emphasize flexibility and advise that conducting a tutorial is in the court’s discretion.
In some cases, there is no need for a tutorial, and the time and expense associated with it should be a
factor in determining whether one should be held. We also suggest the report mention that in some
cases it may be advantageous to conduct the tutorial days or weeks in advance of the Markman
hearing to provide the judge with a more complete technical background and help focus the issues for
the Markman hearing.
Principle 5: Less Complex Cases Should Be Governed By a Simplified Order
The procedure outlined in this principle for less complex cases is a viable alternative to the
procedure outlined for complex cases. In some instances, this simplified procedure also may be
appropriate for complex cases. Once again, we prefer a flexible approach that outlines for the court
the advantages and disadvantages of certain procedures over others.
Regardless of the complexity of a scheduling order, in general, requiring expert reports
covering liability issues prior to a claim construction ruling is not helpful in general. Experts may be
forced to opine in the alternative based on each side’s claim construction positions or to supplement
their expert reports (to the extent a court will permit them) after receiving a claim construction ruling.
Conduct of the Hearing Itself
This section indicates that a Markman hearing is always necessary. In some cases, no
hearing may be needed and the court may be able to address claim construction disputes based on
written submissions. In others, such as cases involving patents to a chemical compound, even
briefing may be extraneous. The draft Report should include a discussion of the advantages and
disadvantages of the various ways in which a court can conduct a Markman “hearing.” Courts should
have flexibility in how they fashion the “hearing,” including whether to hold a hearing at all.
Principle 6: As a General Rule the Court Should Hear from the Parties Term-by-Term
Rather than Hearing from the Patentee Plaintiff on all Terms Followed by the
Accused Infringer Defendant on all Terms
The heading for this principle should refer to “patentee” and “accused infringer,” rather than
“plaintiff” and “defendant” to take into account counterclaims and declaratory judgment actions.
The declaration/deposition proposal for the claim construction hearing may distract a court
from the importance of the intrinsic evidence. This proposal should note the law as espoused in
Phillips, and should provide for the use of extrinsic evidence only to the extent that (1) it is needed in a
case, (2) would not contradict the intrinsic record, and (3) the court would find it helpful.
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Principle 7: The Hearing Should Be Like a Closing Argument with the Lawyers
Pointing to Testimony from Depositions and Exhibits Rather Than
Proceeding More Like a Trial
This principle should emphasize more that a hearing and the structure of that hearing is within
the sound discretion of the court. It would be helpful to address Phillips and the need, if any, for
extrinsic evidence. As worded, this principle suggests/assumes that extrinsic evidence will always be
needed.
Alternative Principle 7: In Some Cases the Hearing Should Be an Evidentiary Hearing with Live
Testimony from Persons Having Ordinary Skill in the Relevant Art
In addition to having the same problems as Principle 7, this alternative principle invites
testimony that is not typically present in current Markman hearings -- testimony of percipient
witnesses, i.e., persons of ordinary skill in the art (POSITA). The determination of who is a POSITA
and what is the relevant art often are disputed and may themselves be the subject of expert testimony.
Moreover, inviting testimony of a hypothetical POSITA does not appear to be a preferred “best
practice” and there may be unintended consequences that result from this procedure.
This alternative also seems to invite prior art inventors to testify about claim terms, which also
may not be helpful to the court and may have a tendency to introduce testimony that contradicts
intrinsic evidence. Although Daubert may not be strictly applicable to Markman proceedings, the court
may adopt some gate keeping function or standard to guard against testimony that is not helpful or
appropriate to the issues before the court.
Principle 8: The Markman Hearing Should Take Place Toward the Middle of the Case
We suggest the inclusion of language indicating that regardless of when the Markman hearing
takes place, expert reports are likely to be most efficiently handled if they are due after the court’s
Markman ruling.
Principle 9: It Is Not Wise to Couple the Markman Hearing with Motions for Summary
Judgment as a Routine Practice
We agree with this general principle. However, where there is no barrier, summary judgment
motions can be taken up at Markman hearings.
Principle 10: While It Is Proper for the Trial Judge to Be Aware of the Nature of the
Accused Items, It is Generally Not Advisable to Require Submission of
Contingent Summary Judgment Motions With the Markman Submissions
This principle purports to describe the case law regarding the use of the infringing product in
deciding claim interpretation issues. Some case law, however, seems to suggest that it is appropriate
for a court to decide claim interpretation issues in the context of the accused product. See, e.g., Mass.
Inst. of Tech. v. Abacus Software, Nos. 05-1142, -1161, -1162, -1163 (Fed. Cir. Sept. 15, 2006). We
again suggest allowing for flexibility here. Depending on the circumstances of a case, it may be proper
to decide certain claim construction issues in the context of summary judgment motions.
Principle 11: Regardless of the Format of the Markman Hearing, the Federal Rules of
Evidence Should Not Be Strictly Applied
This principle may invite testimony that would otherwise be inadmissible. If parties want to rely
on extrinsic evidence in the Markman process, then the other party should have an opportunity to
cross-examine or otherwise challenge the proffered evidence. We do not mean to suggest that
evidence cannot be presented in the form of declarations, so long as the other side has an adequate
opportunity to depose the declarant and to present that cross examination in a manner to be decided
by the court.
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Principle 12: The Hearing Should May Include Consideration of Extrinsic Evidence Which
May Be Considered If Not Inconsistent With the Intrinsic Evidence
We suggest rewording this title as shown above.
We note that this principle implies that claim construction cannot be decided on written
submissions alone, which we have discussed above. The principle also does not emphasize enough
that extrinsic evidence is subsidiary and, if not carefully handled, can detract from the value of the
intrinsic evidence, which is the primary evidence a court should use in claim interpretation.
Principle 13: The Parties Should be Able to Present Live Testimony in the District
Court’s Discretion
This principle seems duplicative of earlier principles or is a topic that is more appropriately
included within another section rather than as a free standing principle.
Principle 14: Testimony from the Inventor Should Be Limited, with Little or No Weight Given to
the Inventor’s Statements Concerning the Meaning of Claims
We generally agree with this principle. However, in the second paragraph, we suggest
changing “plaintiff” and “defendant” to “patentee” and “accused infringer.”
Principle 15: Testimony from Experts or Percipient Witnesses Is Appropriate
This principle overlaps with Principles 7 and 16. We suggest combining these three principles.
While we generally agree with this principle, our comments regarding Principle 7 and Alternative
Principle 7 are largely applicable to this principle as well.
Principle 16: Testimony from Patent Law Experts Should Be Received Only in Rare Cases
This principle overlaps with Principles 7 and 15. We suggest combining these three principles.
While we generally agree with this principle, our comments regarding Principle 7 and Alternative
Principle 7 are largely applicable to this principle as well. We would like to emphasize that the court
should exercise some gate keeping function with regard to every expert proffered in the Markman
process, including patent law experts.
Principle 17: Testimony from a Court-Appointed Expert should be Used Sparingly
We suggest that the draft Report take no definitive position on the use of court-appointed
experts. In our view, there is not enough data to reliably encourage or discourage their use. Rather,
we suggest that this section describe the advantages and disadvantages of using a court-appointed
expert so that a court can decide whether one would be appropriate and desirable in a given case.
It also may be appropriate to suggest the use of a technical advisor where a court believes that
it would be useful. A discussion of the relative merits of these two methods of selecting a court expert
would be helpful.
Principle 18: The Court May Consider Evidence Beyond the Intrinsic Record to the Extent it
Does Not Contradict the Intrinsic Evidence
We suggest adding to this principle title “to the extent that it does not contradict the intrinsic
evidence.” As written, this principle invites extrinsic evidence that may not be relevant and may
contradict the intrinsic record.
This principle also appears to be duplicative of earlier principles. It may be desirable to
combine this principle with another, such as Principle 12.
Principle 19: Evidence of the Accused Device or Process Should May be Permitted
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We suggest changing “Should” to “May” in the principle title as shown above.
This principle largely overlaps with Principle 10 and we suggest combining both. We also note
that this principle contains a more accurate statement of the law with respect to how the accused
infringing device may be used in the context of a Markman ruling. Our comments regarding Principle
10 are applicable to this principle as well.
Principle 20: Receipt of Prior Art Should May Be Permitted, but the Weight to be
Given Varies
We suggest changing “Should” to “May” in the principle title as shown above.
While it is proper to consider prior art that was part of the intrinsic record, a court should be
careful in considering extrinsic prior art that may be used to contradict the intrinsic evidence.
The Markman Ruling Itself
It may be helpful to include a principle on the timing of Markman rulings in this section.
Preferably, a ruling would be made early enough in the case to avoid inefficiencies in expert discovery,
in particular.
Principle 21: Courts Should Usually Not Issue Tentative Markman Rulings in Advance
of the Markman Hearing
Again, we agree with this principle. To the extent the court feels that it is leaning toward a
particular claim construction based on its interpretation of some facts, it can signal to the parties that it
would like them to address those facts and potential construction in their briefs and arguments.
Principle 22: The Markman Construction Ruling Should Be Prepared as a Well-Reasoned
Opinion that can be Expressed in Understandable Jury Instructions
We agree with this principle. However, we suggest deleting the last paragraph as it is
duplicative of discussions in previous principles.
Also, it may be helpful to mention here that not every claim term needs to be rewritten or
defined during claim construction. Some terms may not be disputed and some may be appropriate to
assume their ordinary meaning.
Principle Principal 23: The Significance of the Claim Construction, Coupled With a
Comparatively High Appellate Reversal Rate May Warrant
Consideration of a New Mechanism for Interlocutory Appeals from
Markman Rulings
We correct the spelling of the term “principle” in titles 23 - 26.
We do not believe that a best practices report should propose changes in the law, which this
principle does in the last sentence. The need for legislative reform on the interlocutory appeal of
Markman determinations is far too radical a suggestion to be couched as a best practice. The issue of
interlocutory appeals from Markman determinations may merit study and debate, but we believe that
debate should take place in a different forum and in a more deliberate manner. AIPLA has discussed
examining this issue, but has not at this point formulated any resolution regarding this type of
legislative reform.
Appendix A / Appendix B
As we have noted previously, we are concerned that courts may adopt the proposed case
management orders without critically examining the issues presented by a particular case. We believe
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that the draft Report should arm a court with the knowledge necessary to fashion its own Markman
procedure in each case and to tailor the procedure to the needs of that case, the litigants and the
court. To this end, we recommend that for aspects of the scheduling orders unrelated to the Markman
process, the Report delete specifics such as notice of reliance on opinion of counsel, expert
disclosures on liability issues, times, dates, quantities, etc.
We understand that the Working Group is contemplating holding a public meeting in the
Washington D.C. area in the Spring to review the draft and obtain additional input from the bar. AIPLA
would be pleased to assist you in organizing and publicizing such an event. Please let us know how
we can be of help in this regard.
Sincerely,
Michael K. Kirk
Executive Director
AIPLA
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