William F. Lee & Anita K. Krug, Still Adjusting to Markman: A Prescription for the Timing of Claim Construction Hearings, 13 Harv. J.L. & Tech. 55 (1999), reprinted in 33 Intell. Prop. L. Rev. 87 (2001).
evidence, "Markman" hearings, patent claims
This Article argues that, in most cases, there is an optimal time for holding the Markman hearing.
Part II provides a short summary of both the Federal Circuit's holding in Markman and the rationale behind the Supreme Court's affirmance of that holding. It then delves into the predictable effects of Markman, as well as into the maze of questions that the decision has engendered and the ways in which the district courts have answered those questions.
Part III discusses the issue of the timing of claim construction hearings, presenting at the outset the possible alternatives. It argues that holding Markman hearings very early in the course of litigation is undesirable and inefficient, as is holding them any time after opening arguments during the infringement trial. Rather, the optimal time for the claim construction hearing is, in most cases, after discovery but before the trial begins--specifically, at the time of the court's consideration of summary judgment motions.
Note: Reprinted in 33 Intell. Prop. L. Rev. 87 (2001).