Role of Judge/Jury, Markman Hearings, and Introduction to Evidence July 21, 2016 Drew DeVoogd, Member
Patent Trial Proceedings in the United States In patent matters, trials typically occur in the federal district courts, not state courts Federal courts have sole jurisdiction over patent infringement actions Critical components to district court litigation: Judge Jury Exception: Section 337 Investigations in the International Trade Commission No jury involved. Administrative Law Judge acts as fact-finder 2
The Role of the Judge Presides over proceedings, including schedule, ruling on pre- and posttrial motions, selection of jurors, behavior of parties Controls submission of evidence Rules on objections to questions during examination Rules on proposed admission of documents or other evidence Determines questions of law and requests for equitable relief Instructs jury on law applicable to the parties claims Acts as sole fact-finder and issues a verdict if there is no jury ("bench trial") Parties can waive right to a jury trial and proceed with bench trial Can even reject conclusions of the jury under limited circumstances! 3
The Role of the Jury Juries vary in size from six to twelve Vetted by during pre-trial selection process called "voir dire" Unanimous verdict is required unless the parties agree otherwise Finds facts, including reaching a verdict on liability and damages Permitted to credit some, all, or none of a witness's testimony Decides ultimate question: Did defendant infringe plaintiff's patent? Verdict may be general, or in response to specific questions Written verdict form is proposed by parties and approved by judge 4
Markman Hearing Patent claims must first be construed how a person of ordinary skill in the art would have understood them at the time of the invention Claim interpretation is a question of law for the judge, not a question of fact for the jury, even though the interpretation of patent claims may include the interpretation of some factual evidence. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The Judge will instruct the jury on the meaning of the claims at issue, and the jury is left with factual question of whether there is infringement. 5
Markman Hearing (cont'd) Major issue: When is Markman held? Early (before full discovery); Middle (after full discovery); End (at trial) First principle: Language of the claim term is enough Analysis is context dependent: "Intrinsic" evidence (1) Complete claim (2) Other claims (3) Disclosures of the specification "Extrinsic" evidence dictionaries, expert testimony, 6
Markman Hearing (cont'd) Pres. Bill Clinton: "It depends on what your meaning of the word 'is' is." Straight Path IP Group U.S. Patent No. 6,108,704: Point-to-Point Internet Protocol Describes certain protocols for establishing communication links through a network 1. A computer program product for use with a computer system, the computer system executing a first process and operatively connectable to a second process and a server over a computer network, the computer program product comprising:... program code for transmitting, to the server, a query as to whether the second process is connected to computer network; Federal Circuit spent 14 pages analyzing the word "is" in context of claims and specification 7
Federal Rules of Evidence Govern what evidence may be considered by Judge/Jury and how it may be presented Arise in large part out of English Common Law Hearsay Rule: arose in 17 th Century States may not have written rules of evidence Massachusetts has no written rules of evidence Judge rules on any objections to admission of evidence Pre-trial motions "motions in limine" Real time during witness testimony 8
Federal Rules of Evidence Fed. R. Evidence 401 Relevance Relevant Evidence: Evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence Fed. R. Evidence 403 Probative Value Outweighed Although relevant, evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by consideration of undue delay, waste of time, or needless presentation of cumulative evidence FRE 403 is almost never applied during a bench trial 9
Federal Rules of Evidence (cont'd) Fed. R. Evidence 408 Offers of Compromise Evidence of (1) furnishing or offering or promising to furnish, or (2) accepting or offering or promising to accept, a valuable consideration in compromising or attempting to compromise a claim which was disputed as to either validity or amount, is not admissible to prove liability for or invalidity of the claim or its amount. Evidence of conduct or statements made in compromise negotiations is likewise not admissible Fed. R. Evidence 602 Personal Knowledge A witness may not testify to a matter unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter 10
Federal Rules of Evidence (cont'd) Fed. R. Evidence 802 Hearsay Hearsay is not admissible except as allowed by the Rules of Evidence Fed. R. Evidence 801(c) Hearsay is a statement, other than one made by the declarant while testifying at the trial, offered in evidence to prove the truth of the matter asserted Such out of court statements are considered unreliable Fed. R. Evidence 803 and 807 Hearsay Exceptions 24 exceptions, including a catchall: is the evidence material and trustworthy? Exceptions swallow the rule? Major Exceptions: Business records; Public records; Learned treatises 11
Federal Rules of Evidence (cont'd) Fed. R. Evidence 801 (d) Statements that are not Hearsay: (1) Prior inconsistent statements under oath by the witness, or consistent statements if to respond to an argument of recent fabrication and (2) Admission by a party opponent 12
Thank you! 13