When the Supreme Court decided Markman v. Westview Instruments, making claim construction an issue for the court, the general belief was that claim construction would attain a dimension of predictability previously missing when juries decided the issue.
Indeed, the court itself saw “the importance of uniformity in the treatment of a given patent as an independent reason to allocate all issues of construction to the court.” Markman v. Westview Instruments, 517 U.S. 370, 390 (1996).

Markman, so it was believed, would also lead to more efficient resolutions of patent infringement suits. Once claim construction was initially determined by the court, the prevailing party could then file the appropriate summary judgment motions to resolve most, if not all, remaining issues.

In some instances, claim construction decisions might force one party to accept a final judgment against it, thereby allowing an immediate appeal.

This anticipated efficiency presupposed that courts would resolve claim construction in a dispositive fashion early on in the litigation. The practical implementation post-Markman, however, has produced something quite different.

This is due, in substantial part, to a lack of uniformity among the different courts as to when, and how, claim construction issues are to be resolved.

It is also due to the practice of individual judges to revisit claim construction issues throughout the proceedings — sometimes changing already-issued constructions well after discovery has been completed.

As a result, the claim construction exercise is arguably less predictable than when the issue was decided by juries.

The only means to abate this lack of predictability is to implement federal rules mandating that claim construction issues be resolved during the initial stages of patent infringement litigation, and that, once issued, a court’s claim constructions could only be modified in extreme instances, and only with sufficient notice to the parties to allow adequate preparation to address such modifications at trial.

The Current Inadequacies in Claim Construction Procedures

A. The Widely Disparate Practices among District Courts

Despite the particular procedure used therefor, claim construction is the first issue decided in any patent infringement analysis. See, e.g., Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed. Cir. 1990).

When “the parties do not dispute any relevant facts regarding the accused product but disagree over which of two possible meanings of [a claim] is the proper one, the question of literal infringement collapses to one of claim construction ...”. Athletic Alternatives v. Prince Mfg., 73 F.3d 1573. 1578 (Fed. Cir. 1996).

Further, claim limitations are to be construed in the same fashion for both infringement and validity purposes. Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006).

Thus, claim construction is the linchpin issue in the vast majority of patent infringement matters.

Yet, the Federal Circuit has repeatedly stated that district courts are not required to follow any particular procedure in construing claims. See, e.g., Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001).

One district court, recognizing the procedural freedom pronounced in Ballard, summarized the claim construction alternatives thusly:
1)hold a claim construction hearing before trial;
2)interpret the claims on the paper record; and
3)rule on the claim interpretation issues just prior to instructing the jury. Safe-Strap Co. v. Koala Corp., 270 F. Supp. 2d 407, 415 (S.D.N.Y. 2003).

In actuality, courts have many more possible procedures available for claim construction, including hybrid proceedings combining the various options outlined in Safe-Strap.

For example, a district court could initially ask for briefing on claim construction, resolving those disputes that the court finds amenable for resolution on the papers.

The court can then ask for a claim construction hearing on the remaining issues, after which the court may determine that certain of the remaining issues require the evaluation of evidence to be presented at trial.

The court would then rule on the remaining issues only after the trial has taken place. This discretion leaves the parties to guess when the various disputed terms will ultimately be construed.

A court may also limit the number of limitations to be construed. Theoretically, a court need only construe the disputed limitations. See, e.g., Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991).

However, a court may further limit the number of terms it will construe, even if, as a consequence, certain disputed limitations are not to be construed.

In one instance, a district court required the parties to elect no more than 10 disputed claim terms for construction, and the patentee to select no more than three representative claims from each patent for construction and trial. [1] Hearing Components, Inc. v. Shure, Inc., Civ.No. 9:07CV104, Order (E.D. Tex. June 13, 2008) at 1-2.2.

This procedure has yet to be reviewed by the Federal Circuit, which has otherwise held that, “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

Equally uncertain in most cases is the stage of a proceeding that a court will construe claims. As noted above, possible claim construction exercises may be taken at virtually any time in a proceeding, up until the moment that the jury is to be charged.

Thus, one or both parties can file motions for claim construction hearings and/or summary judgment motions implicating claim construction issues and a district court can simply refuse to engage in either procedure, leaving the parties to guess at the ultimate construction of claim terms until after the trial has concluded.

This is hardly the predictability that was contemplated when the Markman opinion was issued.

The Broad Discretion of the Individual District Judge

Individual judges are free to alter claim constructions within a single proceeding, further undermining the anticipated predictability of claim construction proceedings post-Markman.

In Uniloc USA, Inc. v. Microsoft Corp., the district court issued a decision construing the claim terms identified by the parties as disputed. Uniloc USA, Inc. v. Microsoft Corp., 447 F. Supp.2d 177 (D.R.I. 2006).

Thereafter, as part of its decision on summary judgment, the same judge in the same proceeding opted to “clarify” one of the previously-interpreted claim terms. Uniloc USA, Inc. v. Microsoft Corp., 2007 U.S. Dist. LEXIS 77966 at *35 (D.R.I. Oct. 19, 2007), citing Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002).

In Kopykake, the decision relied upon by the Uniloc court, the Federal Circuit pronounced for the first time that “[d]istrict courts may engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.” Kopykake, 302 F.3d at 1361.

However, the Kopykake proceeding involved the construction of a term that changed from the preliminary injunction phase of the proceeding to the permanent relief portion of that proceeding. See id.

Indeed, the majority of judges that have engaged in a “rolling construction” in reliance on Kopycake have done with regard to claim constructions issued as part of a preliminary injunction proceeding.

However, there are judges, such as the one presiding in Uniloc, who have seen fit to revisit the issue of claim construction after construing claims in connection with the permanent relief phase.

The Federal Circuit itself has recently announced that “a district court may engage in claim construction during various phases of litigation, not just in a Markman order.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006). But see Therasense, Inc. v. Becton, Dickinson & Co., 2008 U.S. Dist. LEXIS 27444 at *15-16 (N.D. Cal. April 3, 2008) (refusing to revisit claim construction issued after a full Markman hearing).

Thus, a district court may issue a claim construction decision early in a proceeding, e.g., before any meaningful discovery is taken by either party.

With this decision in hand, both parties conduct their discovery and gather evidence to be used for summary judgment and at trial. As is the case in most proceedings, the parties file their respective summary judgment motions after the close of discovery and after the preparation of expert reports.

At the urging of one party either during summary judgment or in the preparation of jury instructions, the district court may opt to “clarify” its earlier construction of a claim limitation, leaving the other party with no evidence directed to the “clarified” construction. Consequently, that party is unable to prove, or defend against, an infringement case.

Nor does a judge need to accept the parties’ constructions of particular claim term. See, e.g., Exxon Chem. Patents v. Lubrizol Corp., 77 F.3d 450, 451 (Mayer, J., concurring) (“Two judges have divined an interpretation of the claim that occurred to no one else in this extensive litigation”).

Presumably, this means that, even where parties have stipulated to the meaning of a term, a judge can opt to adopt his or her own construction, and may do so after discovery is closed.




The afore-described situations are anecdotal of the myriad predictability problems that may arise at the whim of a particular district judge.

In order to prevent claim construction proceedings from becoming nothing more than a procedural free-for-all, the federal court system should be subject to rules intended to standardize such proceedings. A general framework for such rules is proposed in the next section.

A Proposal for Standardizing Claim Construction

Various courts, such as the Northern District of California, have implemented rules regarding patent cases. However, these rules tend to be more encompassing than necessary, requiring infringement charts, the identification of invalidating prior art, and the like.

Rules with a narrower scope would appear to serve the purpose of claim construction predictability and efficiency better. Thus, the following are the features minimally necessary for federal rules designed to govern claim construction proceedings:

1) Claim construction shall be bifurcated from the remaining issues in a patent suit;

2) The parties shall initially indicate to the district court whether claim construction required, and, if so, what limitations are disputed;

3) Any party seeking to rely upon extrinsic evidence shall file a motion to submit such evidence, identifying the extrinsic evidence and the claim limitation(s) to which that evidence pertains, and indicating whether an evidentiary hearing is required;[2]

4) Upon motion therefor, the district court shall determine whether it requires the identified extrinsic evidence to interpret the identified claim limitation(s), and whether such evidence is to be submitted in an evidentiary hearing;

5) After rulings on any motions for the submission of extrinsic evidence, the parties shall commence briefing the claim construction issues, limiting the claim terms addressed to those previously identified as disputed;

6) After briefing on claim construction has concluded, and, if previously allowed, the district court shall hold the evidentiary hearing regarding extrinsic evidence;

7) Where there is to be no evidentiary hearing, a district court may nonetheless ask for oral argument on claim construction;

8) The district court’s claim construction ruling shall be limited to the terms identified as disputed by the parties;

9) Discovery on all remaining issues shall be stayed pending a decision on claim construction; and

10) Issued claim constructions may only be amended in extreme circumstances, and, in such an event, the parties are to be afforded reasonable additional time to conduct discovery in light of such amendment(s).

Of course, additional details will be required, such as timing of the afore-described events, the use of experts, the use of discovery when extrinsic evidence is allowed, limits on terms to be construed, etc.

However, with at least the foregoing in place to govern claim construction universally, the anticipated predictability in the wake of Markman may yet be realized.

— By George C. Summerfield Jr., Stadheim & Grear

George C. Summerfield is a partner with Stadheim & Grear in Chicago.

[1] The court in Hearing Components cited N.D. Cal. Patent R. 4.3(c), which requires that the parties identify “the terms whose construction will be most significant to the resolution of the case up to a maximum of 10.”

[2] An evidentiary hearing would not be permitted if the claim construction record is limited to intrinsic evidence.

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