U.S. district court judges often lack the scientific or engineering background to fully understand the issues in highly technical patent cases without outside assistance. And ever since the Supreme Court’s Markman ruling in 1996 finding that claim construction – the interpretation of the words of a patent claim – is a task given over to the judge, it has been more important than ever for judges to get a solid working knowledge of the subject matter of a case.
Judges now routinely convene so-called Markman hearings, also known as claim construction hearings, before trial to help them in their task of claim construction, which is at the core of many patent disputes. Many patent lawyers say the Markman hearing has become second in importance only to the trial itself.
In a Markman hearing, judges must resolve all the disputes about the interpretation of a patent and must construe the claims for trial. The Markman hearing is therefore a key opportunity for both parties to guide the judge through the thicket of the evidence and to help him or her understand the case.
There are a number of ways to give the judge the needed guidance. One of them is a patent tutorial, which is generally presented months or weeks before the Markman hearing, in the form of a 30-minute factual documentary presentation that explains the technology. Typically, each side is given the chance to create a tutorial, which must stick to the facts and must not be argumentative. The tutorial can be presented either live, usually using a combination of PowerPoint and Trial Director, or as a DVD with a voice-over.
As Vincent P. Kovalick of the Finnegan Henderson firm wrote in China IP News in October 2009, “Often judges will request a brief tutorial on the technology of the patent either before or in conjunction with the Markman hearing. This is a great opportunity to stage your case in your favor. Lawyers often hire graphics consultants to help create insightful and persuasive graphical animations and tutorials for the judge. This is costly, but it is money well spent as most U.S. judges do not have technical backgrounds.”
Indeed, the use of Markman hearings is expanding in the courts and in administrative hearings. Judge Davis in EDTX is holding Markman hearings early in a case, so-called mini-Markmans, in an effort to resolve cases more efficiently. In the International Trade Commission (ITC), Markman hearings were introduced in 2009. Patent tutorials are used in many of these cases as well, so their use is also on the rise.
At A2L Consulting, we have produced many such patent tutorials. Below are several examples of patent tutorials for judges. Each is designed to provide an overview of the technology, the prior art and the patents involved. Each includes just a hint of advocacy.
The patent tutorial presentation below was presented on DVD in the In re Katz Interactive Call Processing Patent Litigation MDL. It provides an overview of call processing and call center technology and is structured so that the judge or clerk can view portions that are important to them whether an overview, prior art or patents in issue.
The Katz MDL Patent Tutorial
The below litigation PowerPoint, used as a patent tutorial, demonstrates the workings of an optical disc drive, using the analogies of writing and erasing on a legal pad to show the concepts of data storage, erasure, and retrieval. With clear graphical icons, it also shows the technical problems that the inventors of an optical disc drive had faced and the patented solutions that they came up with to solve them.
PowerPoint Patent Tutorial
The below patent tutorial shows graphically the way in which a doctor’s prescriptions for aspirin and Lipitor are translated into a hospital picking machine that automatically selects and removes the medicines for the patient.
Flash-Based Patent Tutorial (Pre-Markman)
With careful planning and attention to detail, even the most complex technology can be explained to a judge unfamiliar with that particular technology. The use of litigation graphics and either a voice over or in combination with a live presenter makes this job managable.
Additional patent resources on the A2L Consulting website include:
- Free E-Book: The Patent Litigation Toolkit
- Article: Turning Patent Drawings into Trial Presentations
- Article: Patent Infringement Trial Graphics
- Article: Patent Litigation in the International Trade Commission (ITC)
- Article: Teaching Science to Juries in Patent Cases
- Topic: On-site A2L Articles Related Patent Litigation