Markman v. Westview Instruments, Inc

Brief Fact Summary. The Petitioner, Markman (Petitioner), brought a patent infringement suit against the Respondent, Westview Instruments, Inc. (Respondent). The jury interpreted expert witness testimony and held for the Petitioner. The Judge directed verdict for the Respondent stating that the jury interpreted the information incorrectly.
Synopsis of Rule of Law. In some cases where it is unclear as to whether a judge or jury should decide upon terms of art in a case that is traditionally decided by a jury, precedent states that, judges, because of their experience may be more capable to define the terms.

Facts. The Petitioner in this infringement suit owned a patent for his inventory control and reporting system for dry cleaning stores. The patent described a system that could monitor and report the status, location and movement of clothing in a dry-cleaning establishment. The system consisted of a keyboard and data processor to generate written records for each transaction and included a bar code readable by optical detectors operated by employees who logged the progress of clothing through the dry-cleaning process. The Respondent’s product, the Exponent, also included a keyboard and processor and it listed charges for the dry-cleaning services on bar-coded tickets that could be read by portable optical detectors. Petitioner brought an infringement suit against Respondent and Althon Enterprises, an operator of dry-cleaning establishments using Respondent’s products. Respondent answered that Petitioner’s patent was not infringed by its system because the Respondent’s system functioned merely to record an inventory of receivables by tracking invoices and transaction totals, rather than recording and tracking an inventory of articles of clothing. Part of the dispute hinged upon the meaning of the word “inventory.” A jury heard the case and heard from one of Petitioner’s witness who testified about the meaning of the claim language. The jury compared the patent to Respondent’s device and found an infringement of Petitioner’s claim. The District Court nevertheless granted Respondent’s deferred motion for judgment as a matter of law, reasoning that the term “inventory” in Petitioner’s patent encompassed both cash inventory and the actual physical inventory of articles of clothing. Since Respondent’s system could not track items it directed a verdict on the ground that Respondent’s device did not have the means to maintain an inventory total and could not detect and localize additions to inventory as well as deletions from it as required by Petitioner’s claim. Petitioner appealed and argued that the District Court erred in substituting its construction of the disputed claim term “inventory” for the construction the jury had given it. The United States Court of Appeals for the Federal Circuit affirmed, holding the interpretation of claim terms to be the exclusive jurisdiction of the court and the Seventh Amendment of the United States Constitution (Constitution) to be consistent with that conclusion.

Issue. Whether the interpretation of a so-called patent claim, the portion of the patent document that defines the scope of the patentee’s rights, is a matter of law reserved entirely for the court, or subject to a Seventh Amendment guarantee that a jury will determine the meaning of any disputed term of art about which expert testimony is offered.

Held. Construction of a patent, including terms of art within its claim, is exclusively within the province of the court. Accordingly, the court held that the interpretation of the word “inventory” in this case was an issue for the judge, not the jury and affirmed the decision of the Court of Appeals for the Federal Circuit.

Discussion. Part of the dispute hinged upon the meaning of the word “inventory” and its interpretation by the jury and judge. The first question the court had to address was whether historically, the cause of action was one that was either tried at law or in equity. If a question of law, the second question was whether the particular trial decision must fall to the jury in order to preserve the substance of the common-law right as it existed in 1791. As for the first question, the Court compared the statutory action to 18th-century actions brought in the courts of England prior to the merger of the courts of law and equity. It found that since patent infringement cases were historically tried at law, that this case was no different. The second question was the more difficult one. It asked whether a particular issue occurring within a jury trial (here the construction of a patent claim) was itself necessarily a jury issue, thereby to be decided by a jury. But when, as here, history provided no clear answer. The Court had to make a judgment about the scope of the Seventh Amendment of the Constitution guarantee based on existing precedent. Where history answered no questions, precedent allowed functional considerations to choose whether judges or juries were better able to define terms of art. It found that since patent construction in particular was a special occupation, requiring special training and practice, the judge due to his training and discipline was more likely to give a proper interpretation to such cases than would a jury. Therefore the judge was more likely to be correct and accurate in performing such a duty than a jury could be expected to be.