Markman Hearing - PowerPoint PPT Presentation

xiang
markman hearing n.
Skip this Video
Loading SlideShow in 5 Seconds..
Markman Hearing PowerPoint Presentation
Download Presentation
Markman Hearing

play fullscreen
1 / 9
Download Presentation
Markman Hearing
228 Views
Download Presentation

Markman Hearing

- - - - - - - - - - - - - - - - - - - - - - - - - - - E N D - - - - - - - - - - - - - - - - - - - - - - - - - - -
Presentation Transcript

  1. Markman Hearing • Why is the Markman hearing important? • Sequence of events leading up to the Markman hearing • Preparation for the Markman hearing • The Markman hearing presentation • Excerpts from the Osteotech Markman hearing

  2. Why Markman Hearing Is Important • Can be case-dispositive, or at least dispositive of infringement issue • Sets direction for balance of case • Opportunity to assist court and benefit client

  3. Sequence of Events Leading Up to Markman Hearing • E.g., N.D. GA Local Patent Rules • Govern timing of contention disclosures • LPR 4.1 • LPR 4.2 and 4.3 • Govern timing of claim construction • LPR 6.1 • LPR 6.2 • Example of Proposed Claim Construction • LPR 6.3(a) • Example of Joint Claim Construction Statement • LPR 6.4 • LPR 6.5(a) • LPR 6.5(b) • LPR 6.6

  4. Preparation for the Markman Hearing • Learn the judge’s practices • Hearing vs. papers • Expert testimony • Tutorial only? • Claim construction? • Time allotted • Claim construction philosophy • How to find out about a judge’s practices • Local counsel • Does judge have published guidelines? • Local patent rules • Judge’s Markman decisions • Positioning yourself for the Markman Hearing

  5. Markman Hearing • Goals • Evidence • Expert testimony • Presentation of your position

  6. Osteotech Patent Claim • Claim 4: • A flowable composition for application to a bone defect site to promote new bone growth at the site which consists essentially of a new bone growth-inducing amount of demineralized osteogenic bone powder in a biocompatible carrier, the carrier being selected from a member of the group consisting of liquid polyhydroxy compound, liquid polyhydroxy compound ester, liquid solution of solid polyhydroxy compound . . . , wherein the polyhydroxy compound is selected from the group consisting of acyclic polyhydric alcohols, . . . monosaccharides, disaccharides, water-soluble or water dispersible oligosaccharides, polysaccharides, polyalkylene glycols and mixtures thereof.

  7. GenSci’s DynaGraft • Demineralized bone composition implanted at bone defect sites • Made using a carrier known as Pluronic F127 – a block copolymer • Has two hydroxyl groups • F127 mixed with water • Issue: is Pluronic F127 a “polyhydroxy compound?” • GenSci: limited to organic molecules having 3 or more hydroxyl groups • Osteotech: organic molecules having 2 or more hydroxyl groups • Issue: is F127 in water a liquid? • GenSci: it’s a gel, not a liquid • Osteotech: it’s a liquid

  8. Osteotech Markman Hearing • “Polyhydroxy” issue • Expert testimony permitted • GenSci called Dr. Eisch • Eisch direct testimony directed to claim terms “polyhydroxy” et. al. • Focus of cross examination: • Establish that intrinsic evidence supported Osteotech construction • Establish that extrinsic evidence also supported Osteotech construction • Establish that he was working from the wrong frame of reference – i.e., an academic chemist was not a POSA

  9. Osteotech Markman Hearing cont’d • “Liquid” issue • Eisch testified that F127 in water was a gel, not a liquid • However, GenSci’s own documents established that it referred to F127 in water as a liquid • Any definition of “liquid” should be consistent with the way GenSci used the term because its employees are the prototypical POSAs • Illustrates the benefits of using your adversary’s own words