Caseflicks

Supreme Court of the United States • 1996

MARKMAN Et Al. v. WESTVIEW INSTRUMENTS, INC., Et Al.

517 U.S. 370 | 116 S. Ct. 1384 | 134 L. Ed. 2d 577 | 1996 U.S. LEXIS 2804

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Takeaway

In short, this case establishes that judges, not juries, exclusively construe patent claims, while juries retain their traditional role in deciding infringement under the court’s construction.

Background

Herbert Markman owned a patent for an inventory-control and reporting system used by dry-cleaning stores. The system used a keyboard, processor, bar-coded tickets, and optical detectors to track clothing through the cleaning process. Westview Instruments sold a competing system that used bar-coded tickets and optical detectors but, according to Westview, tracked invoices and receivables rather than the physical articles of clothing.

Markman sued Westview and a Westview customer for patent infringement. A central dispute concerned the meaning of “inventory” in Markman’s patent claim. At trial, the jury heard expert testimony and found that Westview infringed claims 1 and 10.

The District Court nevertheless entered judgment as a matter of law for Westview. It construed “inventory” to include both cash inventory and the physical inventory of clothing articles. Because Westview’s system could not track garments through the cleaning process or report their status and location, it did not infringe under that construction. The Federal Circuit affirmed, holding that claim construction is exclusively a judicial function. The Supreme Court affirmed.

Issues

Issue #1

Whether the Seventh Amendment requires a jury to determine the meaning of disputed terms in a patent claim when the infringement action itself is a suit at common law.

Holding

No. Although patent-infringement actions carry a right to jury trial, the Seventh Amendment does not require juries to construe patent claims or technical terms within them.

Reasoning

The Court applied its usual Seventh Amendment inquiry. It first recognized that modern patent-infringement suits descend from eighteenth-century actions at law, so the ultimate infringement dispute is one for which the jury-trial right is preserved. But that conclusion did not itself answer whether every subsidiary question arising during the trial must also be decided by a jury.

The relevant second question was whether jury resolution of claim construction is necessary to preserve the substance of the common-law jury right as it existed in 1791. Clear historical practice could settle that question, but the historical record did not provide a direct answer because modern patent claims had no counterpart in English or American patent practice at the founding.

The closest historical analogue was construction of the patent specification, which then served as the principal description of the invention. The sparse eighteenth-century patent reports did not establish a practice of allowing juries to define disputed language in specifications. To the contrary, the broader common-law practice was that judges ordinarily construed written instruments.

Later English and American materials reinforced that conclusion. Once reported decisions began to describe the practice more clearly, they showed judges construing patent documents. The Court also noted its own precedents stating that construing a patent, like construing other written instruments, belongs to the court. A later suggestion that juries might address technical words did not establish an entrenched founding-era practice capable of triggering the Seventh Amendment guarantee.

Issue #2

Whether construction of a patent claim, including technical terms of art informed by expert testimony, is a question exclusively for the court rather than the jury.

Holding

Yes. Patent-claim construction is a question for the court alone, even when expert evidence helps explain technical language.

Reasoning

The Court distinguished construing the patent document from deciding the factual question of infringement. The judge determines what the patent’s claims mean; the jury may then determine whether the accused product or process falls within those properly construed claims. Earlier cases allowing juries to consider expert evidence concerning the identity or character of physical inventions did not transfer document interpretation to the jury.

Expert testimony does not alter the allocation. Experts may help a court understand technical terms, the relevant art, or the external subject matter described in a patent. But the court remains responsible for giving the patent its legal meaning in light of the claims, specification, and the document as a whole. The need to assess technical evidence does not transform construction into a jury question.

Functional considerations supported judicial construction. Judges are trained to interpret legal texts and are better positioned to test a proposed meaning against the internal structure and coherence of the entire patent. A jury’s special ability to evaluate witness demeanor or credibility is generally less important in this contextual interpretive task.

Uniformity supplied an additional reason for assigning claim construction to judges. Patent boundaries must be knowable to patentees, competitors, and the public. Treating claim meaning as a legal question promotes consistency through precedent within a jurisdiction and through review by the Federal Circuit, whereas jury-by-jury construction would create greater uncertainty about a patent’s scope.