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.
But whereas issue preclusion could not be asserted against new and independent infringement defendants even within a given jurisdiction, treating interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to interjurisdictional uniformity under the authority of the single appeals court.View Full Point of Law
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.