What’s a Markman hearing?

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A Markman hearing is an evidentiary hearing used in United States Federal District Court in patent litigation cases. The hearing is named after the 1996 United States Supreme Court case Markman v. Westview Instruments, Inc. Is conducted when a plaintiff claims patent infringement and the judge must decide whether the language in the plaintiff’s patent application would prevent the defendant from selling or using the same type of invention.

In the Markman case, the plaintiff had patented a system for bar-coding dry cleaning tickets using an optical scanner. Lui’s system enabled a dry cleaning service to monitor its inventory and detect duplication and errors. Defendant Westfield’s system also used barcoded tickets and an optical scanner.

Markman’s jury found for the plaintiff. The district court judge then issued a “direct verdict” for the defendant, ruling that the Westfield system had not infringed Markman’s patent, as it could not keep track of inventory like the Markman system. The direct verdict meant that the judge believed the jury’s decision was erroneous as a matter of law.

The Supreme Court held that the interpretation of that part of the patent which describes the extent of the rights of the patent holder is left to the judge. It found that the District Court’s decision did not run counter to the Seventh Amendment constitutional guarantee that a jury would decide questions of fact in a case. The Court noted that according to common law practice at the time the Constitution was drafted, juries did not decide how to interpret the technical language of patent claims.

As a result of the court’s decision, federal district courts began holding a Markman hearing, sometimes called a “build a claim hearing,” in patent infringement cases. Hearings are held before trial when the jury is not present. In making a decision on the scope of a patent application, the court examines the written description accompanying the patent application and the history of the patent application. In determining the meaning of technical terms in the art, the court refers to standard English dictionaries and affidavits from experts in the relevant field.

Most district courts have guidelines for preparing for a Markman hearing. They require a legal memorandum from the parties supporting their positions and a proposed draft of the plaintiff’s patent application that is understandable to a jury. The legal notices must include a copy of the patent in question, affidavits from any persons skilled in the art involved in the disputed terms, and a list of all witnesses and documents. Today, a Markman hearing often results in patent infringement claims being dismissed or settled before going to trial.

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