Document Type


Publication Date

January 1999


In Markman v. Westview Instruments, Inc., the Supreme Court held that the interpretation of patent claims is a question of law to be determined by the court rather than a question of fact to be decided by the jury. The Court based its holding on the belief that judges are better suited than juries to address claim interpretation issues and that claim interpretation by the court would result in greater uniformity in the treatment of patents. The Markman decision, however, has confronted the district courts with a host of thorny questions, such as what evidence they may consider in their determinations and what issues should be decided in the course of claim construction. In addition, in the process of claim construction, district court judges have had to overcome the limitations associated with their status as lay persons, lacking “skill in the art” about which they must make critical decisions. And, although the Supreme Court may have anticipated that is holding would, through stare decisis, lead to greater intrajurisdictional uniformity in the treatment of a given patent, it may not have anticipated another result: that de novo appellate review would promote frequent reversals by the Federal Circuit and thus deprive litigating parties of certainty in a given case.One of the most intractable issues created by Markman is one of timing: when in the litigation process should the so-called “Markman hearing” take place? Although the district courts have considered and implemented a variety of options, no single answer has been readily forthcoming. Instead, each of the several options has its own perceived advantages and disadvantages. The court may hold the hearing at any of the following times: 1) at the outset of the litigation, 2) after fact discovery but before expert discovery, 3) after all discovery, 4) at the time summary judgment motions are considered, or 5) sometime after opening arguments, whether that be immediately after the trial begins or just prior to the court’s instruction of the jury. This Article 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.