Polsinelli shareholder Keith Grady spoke on a panel at the American Conference International's 8th Annual Paragraph IV Disputes Conference. The event, offering "Expert Insights on Hatch-Waxman Litigation Strategies for Brand Names and Generics" was held on April 28-29th, 2014 in New York City.
Keith's presentation covered the topic "Claim Construction and Markman Hearings: Standards, Jurisprudential Splits and Strategies for Paragraph IV Litigation" and is described as follows:
Claim construction has been described as the most important event in the course of patent litigation – let alone Paragraph IV litigation. The Supreme Court in Markman described claim construction as a “mongrel practice.” This is evident through the considerable split in Federal Circuit claim construction jurisprudence which has caused considerable uncertainty in the planning of Markman strategies. As the Supreme Court did not grant certiorari in Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011), any hopes for consistent guidance in these matters were dashed. All eyes are now on the Federal Circuit’s Lighting Ballast Control LLC v. Philips Electronics North America Corp., 500 Fed. App’x 951, 951-52 (Fed. Cir. 2013) case in hopes that it will finally establish the standard of review for such matters.
This panel provides practical strategies for formulating Markman hearing strategies in view of the still existing intra-circuit split and possible new standard of review. Points of discussion include:
- Understanding how Lighting Ballast Control LLC v. Philips Electronics North America Corp., 500 Fed. App’x 951, 951-52 (Fed. Cir. 2013) may mend the intra circuit split in claim construction jurisprudence
- what the adoption of a deferential standard of review may mean for Markman strategies going forward
- How the split in the Federal Circuit on claim construction has impacted Paragraph IV challenges and related Markman hearings
- more narrow reading of claims vs. broader reading
- findings of fact vs. questions of law
- Cybor and Phillips
- Retractable Technologies
- Revisiting 112 written description and enablement distinction requirements relative to clarity of claims
- reviewing specification requirements
- Strategies for working around these inconsistencies at Paragraph IV Markman hearings