Markman’s in Madison: An Endangered Species?

By: Gaston Kroub

Litigating a patent case in the Western District of Wisconsin (“WDWI”), always an interesting prospect,has just gotten more interesting, especially in cases before Judge Barbara Crabb. The WDWI has earnedits reputation as a sophisticated venue for patent litigation over the years due to its smartjudges,substantial number of filed patent cases, and local rules that make the WDWI a true “rocket docket.”

And now, former-Chief Judge Crabb, who currently enjoys senior status, has decided to do away with amain stay of nearly all patent litigations — the Markman hearing and related claim construction order.

This is an important development, as it presents a potential litigation streamlining procedure for litigants to suggest to other Courts, in addition to its obvious impact on litigants before Judge Crabb.

From a historical perspective, Judge Crabb’s new claim construction procedure hearkens back to the period immediately following the Supreme Court’s issuance of its Markman opinion, when courts and the patent bar wrestled with the proper timing and context for implementing the Supreme Court’sdirectives regarding claim construction in patent cases. During that time, at least one other court forcefully articulated a belief that claim construction should be handled in the context of motion practice, for “[O]therwise the Court risks, crafting elegant, but ultimately useless statements of claim construction that fail to address the controversy before it.”1 In that light, Judge Crabb’s approach, which may seem radical now, in effect is a return to previously endorsed approaches to dealing withclaim construction, and an attempt to focus claim construction on those terms that are truly of import to thedisposition of the case.

This author, having experienced a panoply of claim construction approaches by courts around the country, including some that approximated Judge Crabb’s approach and resulted in efficient resolutionof those particular cases, welcomes this attempt to streamline a critical component of every patent case— and further hopes that Judge Crabb’s announcement will reawaken a dialogue between courts andthe patent bar regarding optimal claim construction approaches.2Regardless whether one considers Judge Crabb’s “new” approach to be truly new, it no doubt was a surprise to the litigants first apprised of her change in claim construction practice. This surprising development was announced, not by Court press release, but via a Magistrate Judge’s order in apending WDWI patent case. That case, Dashwire, Inc. v. Synchronoss Technologies, Inc. (11-cv-257-bbc,W.D. Wisc. 2011), had been filed in April 2011. An initial status conference was held before MagistrateJudge Crocker on July 19, 2011. Judge Crocker then issued an Order on July 28, 2011, and therebyinformed the parties that Judge Crabb, “has changed her procedures for construing claims and deciding summary judgment motions in patent lawsuits.” According to the Order, Judge Crabb’s new procedures would: 1) apply to all pending patent lawsuits where the claim construction briefing process had not yet begun; 2) still require parties to exchange disputed claim terms by the date called-for in the preliminary pretrial conference order; 3) no longer allow for briefing or argument on claim constructionissues in a stand-alone proceeding; 4) eliminate the issuance of a claim construction order by the court;and 5) require the parties to include any claim construction requests in the context of a summaryjudgment motion. Additionally, only terms that had previously been exchanged would be eligible forconstruction, and the previous 16 claim term limit is no longer in force before Judge Crabb.

The Dashwire Order indicates that the timing of summary judgment briefs is not affected by the new procedures in terms of when responses and replies would be due, but that the deadline for summary judgment would be moved up one month to fall seven months before trial. Oral argument would beheld at the Court’s discretion, with the parties free to request oral argument on all issues relating to the pending summary judgment motion, including claim construction. This request would need to be made in the opening summary judgment briefs, together with “an explanation as to why this is necessary.”

Any argument would be limited to the issues and evidence presented in the summary judgmentbriefing, and would also be limited to no more than 90 minutes per side. The issues to be argued would be chosen by the Court from those suggested by the parties.

These new procedures can definitively be classified as “game changer,” particularly in the calculusof deciding whether to bring a patent case in the WDWI. With short odds on drawing Judge Crabb,litigants in the WDWI could very easily find themselves in uncharted patent litigation waters, particularlyif they have never dealt with a similar procedure in the past. It will be interesting to see how these newprocedures play out in the WDWI, and whether similar procedures will be adopted by other busy DistrictCourt Judges faced with expanding dockets and pressure to streamline proceedings. Other potentialconsequences of interest include but are not limited to: 1) whether the WDWI becomes more inviting top atentees prepared to press alleged infringers even further than is currently contemplated by the

“rocket docket” rules; 2) how the Federal Circuit will view these new procedures in the context ofappeals taken from patent cases originating in Judge Crabb’s court; and 3) how claim construction issues are presented to the jury in those cases where summary judgment motions are not filed or denied by Judge Crabb. An exciting development in the patent litigation world to be sure. And Dashwire?It settled on August 2, 2011, less than a week after these new procedures were announced.

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From LAW 360
Intellectual Property Practice
August 04, 2011