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Patent Claim Construction and Markman Hearings

Author(s): Thomas L. Creel
Practice Area: Intellectual property, Litigation, Markman hearings, Patent claims, Patent litigation, Patents
Published: Jan 2013
Supplement Date: May 2021 i Other versions can be found in the Related Items tab.
ISBN: 9781402418471
PLI Item #: 38526

As one judge stated, “To decide what the claims mean is nearly always to decide the case.” Patent Claim Construction and Markman Hearings provides in-depth guidance to this important area of patent practice, walking the reader through the entire process of preparing for, conducting, and appealing a Markman hearing.  In addition, the book includes a comprehensive chapter on the local court claim construction rules of the various district courts that have adopted them.

Patent Claim Construction and Markman Hearings helps readers understand:

  • How courts decide “what a person of ordinary skill in the field of the patent invention would understand the language of the claim to mean”
  • The impact of prior constructions on a new hearing
  • How to decide what claims or claim elements should be construed by the court
  • What constitutes intrinsic and extrinsic evidence in interpreting the claim
  • At what point in the overall patent proceeding a construction hearing should be held
  • What are the rules that will be used when a contested construction is an issue in an appeal to the Federal Circuit
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Mr. Creel has served as mediator and arbitrator in numerous proceedings. He is listed on the approved arbitrator/mediator panels of the Center for Public Resources (Technology Panel), National Patent Board (now part of AAA) (certified panelist), International Chamber of Commerce, World Intellectual Property Organization and American Arbitration Association (Blue Ribbon Patent Panel and certified arbitrator). 

Recognized for his capabilities in the area of patent litigation, Mr. Creel has also been appointed by several federal district judges to serve as a mediator to attempt to resolve disputes, and as a Special Master to provide proper patent claim construction, supervise all pretrial discovery and recommend rulings on summary judgment motions.

Mr. Creel is the editor of The Guide to Patent Arbitration, published by BNA Books. He has authored scores of decisions relating to anticybersquatting of trademarks as an arbitrator under the rules adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). Mr. Creel also frequently writes and speaks on ADR of IP disputes, covering topics such as “How to Avoid Disputes Through Use of ADR” and “ADR in the 21st Century.”


Thomas L. Creel practiced over 30 years as a first chair intellectual property litigator and counselor.

Was head of the Intellectual Property Litigation Practice Area as a partner at Goodwin Procter LLP; co-chair of the Patent Litigation Group while a partner at Kaye Scholer, Fierman, Hayes and Handler and a senior litigating partner at Kenyon & Kenyon.

Litigated in courts throughout the country and before the International Trade Commission.

During government service, handled administrative patent infringement claims against the U.S. government, participated in patent infringement litigation in the U.S. Court of Federal Claims and was responsible for export clearances for certain types of important information.

Most of Mr. Creel’s litigation has been in the patent area, but he has also litigated and counseled in the areas of trade secrets, entertainment, trademarks, copyrights and unfair competition. Many of the world’s largest companies have entrusted their major litigations to Mr. Creel. The technologies involved run the gamut from complex chemistry, pharmacy and biotechnology to microprocessors, surge protectors, electronic light dimmers, computers and copiers.

Mr. Creel taught the patent law course at Columbia University Law School for almost 20 years. He originally taught this course using his own course materials.

He is listed in the Euromoney Guide to the World's Leading Patent Law Experts, the Euromoney Guide to the World’s Leading Trademark Law Experts and Chambers USA: America's Leading Lawyers for Business. These publications selected lawyers for inclusion after conducting extensive surveys of lawyers and clients. Mr. Creel is also listed in The Best Lawyers in America.

Mr. Creel has served as president of the New York Intellectual Property Law Association, Inc. and has been active in other bar associations. Mr. Creel writes and teaches on substantive intellectual property law and on the intricacies of patent litigation. His annual review of the law of patent damages was considered to be the “bible” on the law of patent damages by at least one federal circuit judge.

Mr. Creel has chaired an annual seminar on patent litigation and is often invited to speak at and chair other conferences on substantive patent law and patent litigation. He is the chairperson of the annual PLI seminar “How to Prepare and Conduct Markman Hearings.” He has spoken on ADR of IP disputes at the American Intellectual Property Law Association’s annual meeting. In addition, Mr. Creel spoke on damages and presented a mock examination of a damage expert at the annual PLI Patent Litigation Conference for many of these annual conferences.

Mr. Creel is admitted to the bar of New York and Michigan; the District of Columbia; the U.S. Supreme Court; the U.S. Courts of Appeals for the Federal, Second, Fourth and Fifth Circuits; the U.S. District Courts for the Southern and Eastern Districts of New York, the Northern District of Mississippi and the Central District of California; and the U.S. Court of Federal Claims. He is also registered to practice before the U.S. Patent & Trademark Office.


LL.B., University of Michigan Law School
B.S., University of Kansas