Markman hearings
A Markman hearing is the pretrial proceeding at which a district court construes the disputed claim terms of an asserted patent. Because claim construction is a question of law for the court, the hearing fixes the legal scope of the patent before infringement and validity are tried, and it often determines the case.
The rule
The Supreme Court held in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), that the construction of a patent claim, including the meaning of its technical terms, is exclusively for the court. The Seventh Amendment did not transfer that task to the jury, because patent claim interpretation is a matter of law analogous to construing a written instrument. After Markman, district courts handle claim construction in a dedicated pretrial proceeding — universally called a Markman hearing — that produces a written claim construction order binding the rest of the case.
Almost every patent case turns, at least in part, on what the asserted claims mean. Because the construction of a single term can decide infringement or invalidity outright, the Markman hearing is the most consequential pretrial event in patent litigation. See claim construction.
Governing statute and rules
No statute prescribes the procedure. Markman assigns the task to the court but leaves the procedural mechanics to the district courts under their general case management authority in Rule 16 of the Federal Rules of Civil Procedure. Most patent-heavy districts have adopted Patent Local Rules that supply a structured pre-Markman process.
- E.D. Tex. (Patent Local Rules). P.R. 4-1 through P.R. 4-5 govern claim construction. The parties exchange proposed terms, then proposed constructions and supporting evidence, then a Joint Claim Construction and Prehearing Statement (P.R. 4-3), then opening and responsive claim construction briefs (P.R. 4-5).
- N.D. Cal. (Patent Local Rules). P.L.R. 4-1 through 4-6 follow a similar sequence and produce a Joint Claim Construction and Prehearing Statement before a tutorial and hearing.
- D. Del. (Default Standard for Discovery and Standing Order). Delaware judges typically issue a scheduling order that mirrors the structure of the Northern District of California rules, with a joint claim construction chart and competing briefs.
- W.D. Tex. (Order Governing Proceedings — Patent Cases). Judges in the Waco and Austin divisions use a standing order that compresses the schedule: claim construction briefing typically opens roughly twenty-three weeks after the case management conference, with the hearing about twelve weeks later.
The substantive principles for construction come from the Federal Circuit's en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The court directed that intrinsic evidence — the claims, specification, and prosecution history — controls, with extrinsic evidence consulted only where intrinsic evidence is ambiguous. Phillips rejected dictionary-driven construction and confirmed that a person of ordinary skill in the art reads claim terms in the context of the entire patent.
The framework: from disclosures to ruling
The path to a Markman ruling is a carefully sequenced exchange that narrows disputes before the court is asked to decide.
Step one: infringement and invalidity contentions
Under the typical Patent Local Rules, the patentee serves infringement contentions roughly two weeks after the initial case management conference (P.R. 3-1, P.R. 3-2). The accused infringer responds with invalidity contentions and document production a few weeks later (P.R. 3-3, P.R. 3-4). These contentions frame which terms actually matter and channel the parties toward the disputes worth construing.
Step two: identification of disputed terms
Each side identifies the terms it contends require construction (E.D. Tex. P.R. 4-1; N.D. Cal. P.L.R. 4-1). Most courts limit the parties to ten or fifteen disputed terms, and judges in the Eastern District of Texas and Western District of Texas frequently cut the list further at the hearing.
Step three: exchange of proposed constructions
The parties trade proposed constructions and the intrinsic and extrinsic evidence each will rely on (P.R. 4-2). This step also names any expert who will give testimony on the meaning of a term to one of ordinary skill in the art.
Step four: the Joint Claim Construction Statement
Under P.R. 4-3 the parties file a Joint Claim Construction and Prehearing Statement that catalogs every disputed term, each side's proposed construction, the supporting evidence, the anticipated length of the hearing, and any term whose construction may be case-dispositive. The joint statement is the procedural fulcrum: it locks the parties into their positions and supplies the court with a unified record.
Step five: claim construction discovery
A short window for claim construction discovery — typically thirty to forty-five days — allows depositions of any declarants and exchange of any remaining documentary evidence (P.R. 4-4).
Step six: briefing
Most districts use a three-brief sequence: an opening brief (often filed simultaneously by both sides or filed first by the party with the burden of persuasion on construction), a responsive brief, and a reply (P.R. 4-5). Briefs are typically capped at thirty to forty pages with a strict word or page limit per term.
Step seven: tutorial
Many judges hold a technology tutorial before the Markman hearing. The tutorial may be live or by video. It is usually informal and unsworn; some judges receive evidence at the tutorial, while others treat it as background only. Counsel should confirm the rules in the standing order.
Step eight: the hearing
At the Markman hearing itself, each side argues its proposed constructions, often accompanied by demonstrative slides and, where the court permits, live or videotaped expert testimony. The hearing is recorded but, under Markman, the construction is decided by the judge, not a jury.
Step nine: the order
The court issues a written claim construction order. Construction is binding on the parties for the remainder of the case, including for summary judgment, expert reports, and trial.
Burden, timing, and key deadlines
There is no formal burden of persuasion at the Markman stage in the way there is for invalidity or infringement. The court's task is to determine, as a matter of law, the correct construction. As a practical matter, the party urging a departure from the term's plain and ordinary meaning bears the explanatory load, because Phillips presumes that claim terms carry their ordinary meaning to a person of ordinary skill at the time of filing.
Timing varies by district but converges on a similar window:
- E.D. Tex. Markman hearings are typically scheduled six to nine months after the initial scheduling conference, with infringement contentions served at about week two and the hearing falling roughly nine months later.
- N.D. Cal. Hearings are typically scheduled approximately nine months after the initial case management conference.
- D. Del. Markman hearings often occur eight to twelve months after the scheduling order, depending on the judge's standing rules.
- W.D. Tex. (Waco). The Albright standing order historically targeted a Markman hearing approximately twenty-eight weeks after the case management conference, materially faster than the other patent-heavy venues. See W.D. Tex..
The order itself is generally issued one to four months after the hearing. Some judges issue oral rulings from the bench and follow with a written order.
Interaction with related procedural mechanisms
Stays for inter partes review
Defendants frequently file a petition for inter partes review at the Patent Trial and Appeal Board and move to stay the district court case. Whether the court grants the stay often turns on how close the case is to the Markman hearing. Courts in the District of Delaware and the Northern District of California are more receptive to pre-institution stays; the Eastern and Western Districts of Texas are less so. See PTAB procedure.
Summary judgment
Courts increasingly handle dispositive issues that reduce to construction — for example, indefiniteness, see definiteness, or pure questions of law on infringement, see literal infringement — at or near the Markman stage. A construction that excludes the accused product can compel summary judgment of noninfringement; a construction that captures the prior art can support summary judgment of anticipation.
Section 101
Motions to dismiss under 35 U.S.C. § 101 are sometimes deferred until after construction so that the court has a fixed claim scope to test under Alice. See Alice v. CLS Bank.
Prosecution history estoppel
Construction interacts directly with later prosecution history estoppel and doctrine-of-equivalents rulings, because the construction order fixes the literal scope of the claim against which equivalents are measured.
Practical notes
Choose terms strategically
Counsel should identify, well before the joint statement, the terms whose construction will actually move the case — usually two or three. Disputing every term dilutes credibility and exhausts the court's attention.
Lean on the specification
Under Phillips, the specification is the single best guide to the meaning of disputed terms. A construction that the specification supports is far more durable on appeal than one that depends on extrinsic evidence.
Use experts sparingly
Expert testimony at the Markman hearing should establish how a person of ordinary skill would understand a term, not advocate a litigation-driven construction. Federal Circuit panels are skeptical of expert declarations that contradict intrinsic evidence.
Prepare for indefiniteness
If a term cannot be construed with reasonable certainty under Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), construction may convert into an indefiniteness ruling. Be ready to brief both questions in parallel; see definiteness.
Watch for "plain and ordinary meaning"
Some courts will adopt "plain and ordinary meaning" without further elaboration. That apparent victory often produces costly disputes at trial about what plain and ordinary meaning entails. Where the dispute is real, ask the court to construe the term explicitly.
Pressure points
Standard of review after Teva
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015), the Supreme Court held that the ultimate construction is reviewed de novo, but subsidiary factual findings — for example, what a person of ordinary skill would understand about a term, or how an experiment in the specification was conducted — are reviewed for clear error under Federal Rule of Civil Procedure 52(a)(6). The Federal Circuit has applied Teva narrowly: where a construction rests on intrinsic evidence alone, review remains de novo. The line between intrinsic-only construction and construction grounded in extrinsic factual findings continues to generate appellate disputes. See standards of review.
Tutorials as evidence
Whether and how a technology tutorial counts as evidence varies by judge and remains imperfectly settled. Some judges expressly exclude the tutorial from the record; others rely on it implicitly. Counsel should clarify the status of the tutorial before relying on it.
Means-plus-function and § 112(f)
A construction that triggers 35 U.S.C. § 112(f) — even where the claim does not use the word "means" — can be dispositive. The Federal Circuit's decision in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), eliminated the strong presumption against § 112(f) treatment, and trial courts now scrutinize functional language more closely.
Reconstruction after IPR
If the PTAB construes a term during a parallel IPR, the district court is not bound but cannot easily ignore the Board's reasoning. Courts increasingly hold supplemental Markman proceedings to reconcile constructions after a final written decision.
Phillips at twenty
Two decades after Phillips, the Federal Circuit continues to refine when the specification "limits" a claim and when it merely supplies an example. The court's decisions in Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. 2019), and Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), remain frequently contested authorities.
See also
- Claim constructionThe substantive doctrine that the Markman hearing applies, governed by Phillips v. AWH.
- Markman v. Westview InstrumentsThe 1996 Supreme Court decision assigning claim construction to the judge.
- Phillips v. AWH Corp.Federal Circuit en banc opinion governing the use of intrinsic and extrinsic evidence.
- DefinitenessWhen construction collapses into an indefiniteness ruling under Nautilus.
- Patent discoveryInfringement and invalidity contentions that frame the Markman dispute.
- Inter partes reviewParallel PTAB proceedings that frequently affect Markman timing and stay decisions.
- E.D. Tex.Patent Local Rules and Markman practice in the Eastern District of Texas.
- W.D. Tex.Compressed Markman schedule under the standing order.
- D. Del.Markman timing and procedure in the District of Delaware.
- N.D. Cal.The Patent Local Rules that pioneered the modern claim construction sequence.
- Federal Circuit appealsStandards of review for claim construction after Teva.
- Standards of reviewDe novo, clear error, and the Teva framework on appeal.
Last reviewed: 2026