Understanding Markman: Article is “Go To” Source

June 9, 2004

Jeffrey I.D. Lewis, patent partner, led an American Intellectual Property Law Association subcommittee which has published a Guide to understanding the seminal Supreme Court case on Patents, Markman v. Westview Instruments, and its progeny. The article, "The Interpretation of Patent Claims," AIPLA Quarterly Journal, Winter 2004) is the first body of knowledge interpreting Markman, a landmark patent case decideden banc by the Federal Circuit Court in 1995 and affirmed by the Supreme Court in 1996. This Guide is already being considered by district courts around the country; in the District of Washington, for instance, one judge has had the Guide docketed for a case.

Among other important outcomes, Markman determined that claim interpretation should be decided by the Court rather than by a jury. The Markman case establishes procedures as to how the court should "engage in the process of claim construction," a critical process in establishing the validity of patent infringement.

The article, published in the Winter 2004 AIPLA Quarterly Journal, was written "for the uninitiated," and reviews some of the "more significant rules of claim construction and surveys some of the procedures examined by the Federal Circuit since Markman I and II." The article is expected to become the "go to" source for understanding many of the terms and meanings concerning patents stemming from Markman, including the distinction between "comprising," "including," "consisting of," and "consisting essentially of."