En Liung Huang v. Auto-Shade, Inc.

ORDER AS TO MARKMAN TRIAL ISSUES OF LAW

On November 12, 1996, this Court heard arguments from Plaintiffs and Defendants as to what issues of law should be addressed at a “Markman Trial.” Based on the oral arguments of counsel, the trial briefs submitted by the parties, and the corresponding declarations, this Court makes the following rulings.

I. THE MARKMAN DECISION

As a patent case, this trial necessarily takes place in the shadow of the recent Supreme Court decision in Markman et al. v. Westview Instruments, Inc., et. al, — U.S. —, 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996), aff’g, 52 F.3d 967 (Fed.Cir.1995). Markman clearly holds that the construction of scope and meaning of the patent is a question of law for the court to decide, although the ultimate question of infringement remains for the jury. Id. at —, 116 S.Ct. at 1393 . Expert testimony upon this question is both permissible and appropriate if the court finds it to be of assistance in reaching its determination of the meaning of the language of the patent. Id. at —, 116 S.Ct. at 1394 .

As a consequence of this decision, the Plaintiffs and Defendants both requested that this Court hold a so-called “Markman hearing” or…