Claim Construction Opening Brief
(Markman Hearing)

Summary

This claim construction opening brief (Markman hearing) template may be used by a patent owner or an accused infringer to prepare an opening brief on claim construction in district court patent litigation. The template includes drafting notes and practical guidance. District courts commonly limit the number of claim terms that the parties can ask the court to construe. Courts also typically require the parties to file their opening claim construction briefs simultaneously. Check local rules, local patent rules, the judge's rules, and the initial case management or scheduling order. Alternatively, a court may sequence claim construction briefing like motion briefing (e.g., the plaintiff files a claim construction brief, and the defendant files a responsive brief). Make sure that you comply with any local rules, local patent rules, judge's rules, and case management order requirements on the prior exchange of proposed claim constructions and prior disclosure of expert opinions on claim construction. In the absence of a rule or order requiring the parties to exchange proposed claim constructions before claim construction briefing, consider conducting discovery to elicit the opposing party's positions on claim construction before claim construction briefing. This may serve to narrow the issues. It may also enable you to address some of the deficiencies of the opposing party's proposed claim constructions in your opening brief. (You may, of course, reserve your attack on the opposing party's claim construction for your rebuttal brief if rebuttal briefs are allowed by local rules, local patent rules, the judge's rules or a case management order). As with other types of briefs, you must also comply with local rules, local patent rules, and any rules that your judge may have as to the maximum length and formatting of briefs. You should adapt this template to the claim construction issues in your case. A well-designed claim construction strategy is fundamental to the success of your positions on both infringement and validity. For a discussion of claim construction strategy from the accused infringer's perspective, see Claim Construction Considerations and Strategy (Accused Infringer). For a discussion from the viewpoint of the patent owner, see Claim Construction Considerations and Strategy (Patent Owner). For the principles of claim construction law, see Claim Construction Statements of Law. For a broader discussion of claim construction and Markman hearings in patent litigation, see Horwitz on Patent Litigation CHAPTER 6.syn.