What the Claim Means: Markman Hearings, Intrinsic Evidence, and the Fight That Decides the Case
By Casey Scott McKay ·
Most patent cases are decided at claim construction rather than at trial. A single word construed one way produces infringement and construed another way produces a judgment of non-infringement. This article explains who construes claims and why, and the hierarchy of evidence courts apply. It covers the two narrow routes by which a specification narrows a claim, why the prosecution history is the most dangerous document in the file, and how functional limitations collapse into whatever the specification happened to disclose. It covers term selection, which is a strategic exercise disguised as a procedural one, and the timing choices that determine whether construction resolves the case or merely precedes it. It closes with what a litigator does differently once they accept that the hearing is the trial.
IP and Technology > Patent Litigation | Article | Published 7 February 2026 - Updated 7 May 2026 | Casey Scott McKay - marksy.us
Summary. Most patent cases are decided at claim construction rather than at trial. A single word construed one way produces infringement and construed another way produces a judgment of non-infringement. This article explains who construes claims and why, and the hierarchy of evidence courts apply. It covers the two narrow routes by which a specification narrows a claim, why the prosecution history is the most dangerous document in the file, and how functional limitations collapse into whatever the specification happened to disclose. It covers term selection, which is a strategic exercise disguised as a procedural one, and the timing choices that determine whether construction resolves the case or merely precedes it. It closes with what a litigator does differently once they accept that the hearing is the trial.
Keywords: claim construction, Markman hearing, intrinsic evidence, extrinsic evidence, plain and ordinary meaning, lexicography, disavowal, prosecution history, means plus function, indefiniteness, person of ordinary skill, claim differentiation, preamble, term selection, construction order, summary judgment, expert testimony, dictionary evidence, specification, patent litigation
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