During your Markman hearing in U.S. District Court, a judge rules on the interpretation of patent claims as a matter of law, essentially interpreting the appropriate meanings of relevant key words used in a patent claim. This determination of language determines whether a case will move forward to trial. It is imperative to convince the judge of your case using all possible methodologies. There are two areas of evidence in a Markman hearing: intrinsic and extrinsic. Intrinsic evidence consists of the voluminous patent documentation, the claims, written description and any prosecution history of the patent in question. Extrinsic evidence is defined as "all evidence external to the patent and prosecution history, including inventor testimony, dictionaries, and learned treaties."
The Federal Circuit has indicated that trial courts may consider extrinsic evidence, including expert testimony, for education and background, even where the intrinsic evidence is sufficient to construe the claims. If the trial court is not inclined to hear testimony at the Markman stage, however, then stressing its educational value will likely not be enough.
Rather, the most likely way to convince the court that it needs to hear expert testimony is to show the existence of technical terms in the claims that are not defined in the patent specification. Faced with a choice between competing definitions of technical terms, where the answers are not readily supplied by the intrinsic evidence, the court may be willing to turn to outside help. Of course, this may also require convincing the court that seemingly ordinary claim terms in fact have a technical meaning in the particular field.
How can EBriefs assist throughout this entire process?
By providing immediate, hyperlinked access to the complex material that you have prepared for the court. Providing the court with an electronically linked set of documents and demonstratives that is fully text searchable assures you that the Judge can re-access the key information you have emphasized during the hearing. It provides the best chance for a favorable outcome. A hyperlinked presentation improves your presentation to the court by highlighting and making accessible:
1. Voluminous intrinsic evidence which allows the judge to access the contents of the patent wrapper, including all patent documentation, claims and prosecution history of the patent in context.
2. Detailed extrinsic evidence testimony that you provided to support the written intrinsic evidence which improves the veracity of your argument.
3. The extensive tutorials you prepared for the court.
4. All support materials which are accessible with one mouse click
5. All visual evidence which is more powerful than the written word alone
6. The final product which can be distributed to clients, press, experts, etc. and
7. Perhaps most importantly, Judges (and clerks) love the ease and convenience!
Proof of Concept
The U.S. Department of Labor studied how people retain information depending on the method presented to them. The studies suggest that three days after an event, people retain 10% of what they heard from an oral presentation, 35% from a visual presentation, and 65% from a visual and oral presentation. By using an EBrief not only do you combine written, oral and visual presentations, but you have the added advantage of having this in front of the Judge to review repetitively.
USDOL Study "Presenting Effective Presentations with Visual Aids" May 1996 OSHA Occupational Safety & Health Administration U.S. Department of Labor
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