As the third in our series of posts following up on our article on litigating patent infringement cases in the Eastern District of Virginia (earlier posts can be found here and here), we want to make a few brief points about one of the key events in any patent case – claim construction and the Markman process. Claim construction is especially important in the EDVA because the seven to nine month schedule of the typical patent case makes the timing of a Markman hearing crucial.
The short summary of how the EDVA handles claim construction is that each judge does it differently. There are, however, similarities among the practices of the judges in each of the three divisions of the Court.
In the Alexandria Division, most of the district judges prefer to delay consideration of claim construction until the summary judgment stage. This practice is consistent with other civil cases in Alexandria, where non-dispositive motions are handled by a magistrate judge, and so the district judges tend to have little contact with cases until later in the litigation process. The prevailing view appears to be that claim construction issues are more ripe for determination later in the case, after the parties have conducted discovery and after the parties have had more time to consider settlement.
Some litigants prefer the approach in Alexandria, but in the EDVA, it creates a great deal of uncertainty because the deadline for summary judgment motions is less than two months before trial. The lack of a claim construction until the eve of trial not only makes settlement more difficult, but experts must prepare reports using alternative claim constructions, and trial strategy cannot be set until a decision is rendered, which can be within a week or two of trial.
In Richmond, the district judges are more involved in patent cases from the beginning. Unlike Alexandria, the district judges oversee the initial pre-trial conference and hear non-dispositive motions, including discovery motions. District judges are also more closely involved in the claim construction process. As a result, in Richmond, whether to hold a Markman hearing is typically addressed at the initial pre-trial conference, and Markman hearings usually occur three to four months after responsive pleadings are filed, before expert reports are filed and well before trial. While the Court does not always issue a claim construction before opening expert disclosures are due, that often occurs, simplifying expert reports and summary judgment motions, and allowing the parties more time to prepare trial strategies.
In Norfolk, like Alexandria, the district judges have less contact with patent cases until later in the litigation process. The clerk handles the initial pre-trial conference, and magistrate judges handle most non-dispositive motions. Markman hearings are not scheduled unless the parties request one by motion. In Norfolk, the time between the initial pre-trial conference and trial tends to be the shortest of the three divisions, often less than seven months. Thus, if a party wants the court to schedule an early Markman hearing, they are advised to request one as early as possible. Even then, it may be some time before they receive a ruling on their request. Unlike Alexandria, however, the district judges in Norfolk do not have as strong a preference for combining claim construction with the summary judgment process. As a result, the timing of Markman hearings in Norfolk cases vary from relatively early in the litigation process to as late as a few weeks before trial.
One thing the divisions share is the format for Markman hearings. Live testimony is rarely offered in civil hearings in the EDVA, and the same is true for Markman hearings. Thus, in most cases, Markman hearings last less than a day and resemble an appellate argument, supplemented by exhibits and perhaps PowerPoint presentations. Further, the EDVA judges all have experience with Markman hearings and are familiar with the standards for claim construction, and so litigants can expect judges to be well prepared and capable of understanding patent law concepts.
Lastly, parties should remember that while the EDVA judges all have tendencies and standard practices for handling claim construction, they all make exceptions in particular cases. While parties need to be alert to a judge’s practices, if requested early enough and supported by sound reasoning, all of the judges are open to suggestion about different approaches to Markman hearings.
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