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Markman Final-WDDD v. ATVI

Markman Final-WDDD v. ATVI

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Published by EDVA
Analysis of the upcoming Markman Hearing
Analysis of the upcoming Markman Hearing

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Published by: EDVA on May 27, 2013
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05/30/2013

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MARKMAN HEARING BRIEFS ANALYSIS: EDVA GROUP – MAY 24, 2013
Worlds Inc. vs. Activision Inc. Markman Hearing - Pre-game Overview:Worlds and Activision will have their Markman “claim construction” (interpretation)hearing on June 27
th
of this year. According to the “Joint Claim Construction Statement”filed jointly by the parties on May 17th, the hearing will take about 4 and 1/2 hours andeach side will be allotted one half of this time. Each side will present a tutorial (whichwill count against its 2 hours and 15 minutes). Next, the parties will present their arguments term by term in the order set forth in Exhibit A to the joint statement. Thereare 11 disputed terms…that’s it. The terms in exhibit A have been listed by the parties in
 
order of importance.http://www.scribd.com/doc/143378930/Joint-Claim-Construction-Statement A Markman hearing is a one-day affair in contrast to an actual trial, which could last for weeks. The Markman hearing is perhaps the most important aspect of a patent case because the claim terminology to be used in the event of a trial is often predictive, if notdeterminative, of the outcome. (These hearings are called Markman hearings after thewatershed Supreme Court decision in Markman vs. Westview Instruments, which heldthat the construction of patent terms is a matter of law to be determined by judges.)While the decision in the Markman case is perceived to have helped make the patentlitigation process less arbitrary, there is still some level of angst on the part of litigantsrelated to the manner in which judges make their decisions on the appropriate meaning of claims.http://www.onelbriefs.com/cases/civpro/markman_westview.htm There are generally two methods by which judges make these decisions. In a February2012 publication, Brad Lyerla, Chair of the patent litigation and counseling practice groupof Jenner & Block LLP in Chicago, outlines the Words vs. Invention methods that judgestypically use.
 http://apps.americanbar.org/litigation/committees/intellectual/articles/winter2012-words-invention-claim-construction.html 
What might this tell us about the approach to claim construction taken by the litigants inthe Worlds v. Activision case? For starters, Activision would like the court to agree thatthe claims, as written, do not accurately describe the invention and instead decide that theterminology Activision provides does a better job and should therefore be adopted. It isimportant to note that a “clean room” condition (Hosteny, 2005) should be presentduring claim construction. In other words, what is to be examined and discussed are the patent(s) themselves - there is to be no discussion of the infringing technology. While this“clean room” approach is what should happen at the Markman hearing, what most oftenactually happens is that the defendant takes a look at its technology in light of the patentsthey are accused of infringing and attempts to have the court determine the patent claimlanguage in a way that puts the defendant’s technology safely outside the scope of the
 
 2 patent claims as so interpreted. Narrowing the scope of a claim, to “pigeonhole” it, andultimately have the jury hold that one’s invention does not infringe, is thus thedefendant’s goal. Activision’s claim construction brief follows this defendant-oriented playbook. Activision’s arguments seek to interpret the WDDD claims to add newlimitations by reference to the specifications of the patent and its preferred embodiments,the language of dependent claims, and arguments that words have “special meanings” thatare more narrow than what they ordinarily mean. This is all done in an effort to challengea WDDD claim’s meaning without appearing to simply read a limitation from aspecification into that claim. The plaintiff, of course, wants to avoid having its patentclaims be interpreted in a way that brings them within the prior art or which can beviewed as indefinite (void). We will provide further detail below but we think that it isimportant to try to set forth some of the Markman “rules of engagement.”
 
You may be saying to yourself that this is all just a big game of rhetoric and strainedarguments. Perhaps so, yet thankfully it usually comes down to whether one party hasthe goods or not. What is considered will be the language of the patents, whether suchlanguage is clear and does not need to be construed at all (in which case the court simplyadopts the plain meaning), whether the description of how the patents work (thespecification, which includes words, figures and drawings) can be used to understandwhat is meant, other portions of the patents, and the USPTO patent prosecution history.(Definitions from dictionaries of technical words are also considered in some cases.) Thisis what supplies the “goods.” In this case (and not withstanding that we are invested inWorlds), the party with the “goods” is clearly Worlds.Activision makes a number of clever arguments, yet when you look at the record (asWorlds argues quite expertly in its brief) their arguments often seem contrived. Onedesperate example of this is Activision’s attempt to have language that states that theAvatars in Worlds’ patents are in 3D stricken as ambiguous. Given the numerousreferences to 3D graphical worlds and 3D Avatars this seems a stretch, so why do it?Because Activision knows that if they were dealing with a 2D Avatar, or at the very leastthe absence of a 3D Avatar, it would open the floodgates to prior art that wouldeffectively end this case. This point is made in our earlier invalidity analysis where it is plain to see that much of the prior art submitted by Activision does not relate to a 3Davatar, which points to the shakiness of their case if they are not able to dislodge a presumption of a 3D world.http://edvapatent.wordpress.com/2013/04/18/preliminary-invalidity-analysis-worlds-inc-v-activision-blizzard-inc/ Since it seems unlikely that an intelligent human being (let alone one “skilled in the art”)would read the Worlds patents and not conclude that we are talking about a 3D virtualworld, we are left to ponder the strength of Activision’s case.
 
 3Some words about the Judge:
 
Before we jump into the disputed terms there are some factors that we think could play acontributory role at the margins. First, Judge Denise Casper is a relatively new jurist whowas sworn in to the District Court in December of 2010. Importantly, she is also presiding over the criminal trial of Whitey Bulger, long reputed to be Boston’s mostinfamous gangster. Early signs point to a long and winding course in that case. Is thereanything that can be learned from Judge Casper’s time on the bench that could point tothe way she is likely to approach claim construction? I wouldn’t presume to tell Ropes &Gray or Susman Godfrey how to do their job, but I will point out some observations onJud
 
ge Casper that you might find interesting:
 
1.
Judge Casper is young, energetic and very bright (Wesleyan University, Harvard LawSchool). As such, we posit that she will be unlikely to have much use for “receivedwisdom” or doublespeak from counsel and is likely to educate herself about Worlds’inventions. This does not mean we think she will not rely on a “words” approach, as thatapproach is often the most exacting. For jurists it provides more certainty than trying tograsp advanced technology in patent specifications that reasonable parties can debate adnauseam. That said, it is our expectation that she will have an understanding of the scopeof the invention (as is proper) when determining claim language.
 
2.
Judges in Markman hearings are supposed to construe (interpret) the claims in the patents. This is their job. They are also supposed to construe the claims in such a way asto uphold their validity whenever possible. Activision has invited Judge Casper to findthat a number of terms, which seem to have fairly plain meanings (both as a general matter and in the context of the patents), are in fact hopelessly ambiguous and thus “indefinite.”(If a claim contains words that are “indefinite” then the claim is per se invalid.) We do notexpect Judge Casper to throw up her hands and say she does not know what the wordsmean.
3.
She seems focused on counsel being efficient. She writes in an interesting columnreflecting on her first year on the bench that attorneys who appear before her should notassume she knows the intricacies of a given subject matter. She also makes clear that shewill let those arguing in front of her know where they may begin with respect to her understanding of what has been briefed.
 
http://bostonbarjournal.com/2012/04/30/reflections-on-my-freshman-year-on-the-bench- by-denise-j-casper/
 
4. She appears willing to be exactingly thorough in instances where another jurist mayrely more fully on a fellow judge’s opinion. We believe this reflects what we have statedin number (1) above. An example of this may be found in her approach to an opinion inthe current Whitey Bulger trial. An excerpt from an article on the case follows:
 

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