Mind Your Markman Manners
For some time now, Markman hearings have become an increasingly important part of all intellectual property cases involving patent infringement claims. It is at these pretrial proceedings (which are also known as claims construction hearings) that a United States District Court Judge examines evidence from all parties concerning the appropriate meanings of key words in a patent claim.
To use the common parlance, a Markman hearing is a big deal. It is often the place where many cases are effectively won or lost. Common sense should tell you that this is not a place to misbehave. Yet, for reasons I do not fully understand, I have recently observed a number of attorneys behaving badly at Markman hearings. To be clear, I am not talking about attorneys doing things that are illegal or unethical. Instead, I have observed what my mother might call “bad manners”—instances where counsel seem to forget that they are guests of the court and need to behave accordingly. As is often the case when someone fails to mind his or her manners, these faux pas may not seem major in the grand scheme of things, but the effect of these silly mistakes can and do have a profound effect on your hosts (the judge, clerk, and other court personnel) who ultimately will, in one way or another, be contributing to the decision affecting your client. Here are five easy rules that you should apply, not only at Markman hearings, but in almost any social situation.
Remember: You are the guest
My friend’s mother used to have a sign posted her door that said, “My house...My rules.” While most judges are usually too polite to post such a warning, you should always keep it in mind. You are the guest. You have come into a place with established rules and preferences—know and follow them. How much time has your judge allocated to the hearing? Will there be opportunities to offer live witness testimony, or is it limited to lawyer argument? How familiar is the judge with the technology? Does the judge need background (perhaps a tutorial), or would such efforts be seen as wasting the judge’s valuable time?
It is usually not hard to get answers to these and other similar questions. Check the judge’s courtroom rules for the basic information. Talk to the clerk. See what your colleagues have to say. Check the court’s website. Finally, as radical as it may seem, ask the judge about his or her preferences at status conferences or hearings before the Markman. At a minimum, you will avoid making the most easily preventable of mistakes.
Come with a host gift
As its name suggests, a host gift is something that you bring to leave with the host as a sign that you appreciate all of the hard work that has been, or is about to be done. It never hurts to bring such gifts to court. I am not talking about items designed to seek favor; instead, I am talking about educational tools and other persuasion devices that you can use to make the judge’s job less onerous. For example, prepare side-by-side graphics of the competing constructions, with the parties’ differences clearly highlighted. Consider bringing laminated poster boards of key portions of the patent to help the judge see the terms in context. As fundamental as it may seem, do not forget to have the key documents readily accessible so you may respond to any unexpected, but crucial questions.
Jump in and be ready to help
At my house, one of the best ways to get invited back is to be ready to help clear the table, wash the dishes, or in some way be useful. The same applies in court. Don’t just retype your claim construction terms into a PowerPoint template. Provide real assistance, which often means the use of pictures, not just words. Anticipate the judge’s questions and have a short, clear reply ready to address each one. Keep your assistance focused. For example, limit yourself to no more than three of your most important points. Be ready to help your judge understand why she should care about a particular term.
Don’t overstay your welcome
Benjamin Franklin is reported to have once observed that, “Guests, like fish, begin to stink after three days.” While I am not sure what the appropriate time is for lawyers in court, the general point is equally applicable in Markman hearings. Get to the point and move on. One of the best ways to do this is to not contest scores of terms, particularly the ones that do not matter. Instead, limit the dispute to what is crucial to your case.
Try to be invited back
While some cases are effectively resolved after Markman hearings, most are not. For these cases, the tone you set at the Markman hearing will continue throughout other pretrial hearings, and ultimately, at trial. This fact means two very important things. First, you do not have to pack everything into the Markman hearing. Remember that the scope of the hearing should be limited to claims construction and try to resist the temptation to force in other kinds of issues. Commonly, lawyers try to put all kinds of facts that favor their clients and disparage the opposition into the hearing. While a certain amount of such advocacy can be expected, this is not the place or time for such issues. Second, many of the tools you use at Markman can and should be reused in later portions of the trial. Hopefully, the judge will remember the significance of the material and you will be relying on familiar concepts.
While I cannot guarantee that you will win every claim, I can tell you that following these simple rules will work wonders in the courtroom—or, for that matter, at the next social event you attend. Now, mind your manners!
This article is reprinted with permission from the September 27, 2010 issue of The Recorder. © The Recorder, ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.
Appeared in The Recorder
September 27, 2010