Markman v. Westview Instruments, Inc.

RESPONDENT:Westview Instruments, Inc.
LOCATION:Seminole Tribe

DOCKET NO.: 95-26
DECIDED BY: Rehnquist Court (1986-2005)
LOWER COURT: United States Court of Appeals for the Federal Circuit

CITATION: 517 US 370 (1996)
ARGUED: Jan 08, 1996
DECIDED: Apr 23, 1996

Frank H. Griffin, III – Argued the cause for the respondents
William B. Mallen – for petitioners
William B. Mallin – Argued the cause for the petitioners

Facts of the case

Herbert Markman owns the patent to a system that tracks clothing through the dry-cleaning process using a keyboard and data processor to generate transaction records, including a bar code readable by optical detectors. According to the patent’s claim, the portion of the patent document that defines the patentee’s rights, Markman’s product can “maintain an inventory total” and “detect and localize spurious additions to inventory.” Westview Instruments, Inc.’s product also uses a keyboard and processor and lists dry-cleaning charges on bar-coded tickets that can be read by optical detectors. In an infringement suit, after hearing an expert witness testify about the meaning of the claim’s language, a jury found that Westview’s product had infringed Markman’s patent. However, the District Court directed a verdict for Westview on the ground that its device is unable to track “inventory” as that term is used in the claim. In affirming, the Court of Appeals held that the interpretation of claim terms is the exclusive province of the court and that the Seventh Amendment right to a jury trial is consistent with that conclusion.


Is the interpretation of a patent’s claim, the portion of the patent document that defines the scope of the patentee’s rights, a matter of fact to be decided by jurors?

Media for Markman v. Westview Instruments, Inc.

Audio Transcription for Oral Argument – January 08, 1996 in Markman v. Westview Instruments, Inc.

Audio Transcription for Opinion Announcement – April 23, 1996 in Markman v. Westview Instruments, Inc.

William H. Rehnquist:

The opinion of the Court in No. 95-26, Markman versus Westview Instruments will be announced by Justice Souter.

David H. Souter:

This case comes to us on writ of certiorari to the Court of Appeals for the Federal Circuit.

It is not as exciting as the one that Justice Ginsburg has just described to us.

The issue is whether the construction of a patent falls exclusively within the province of the court, and specifically whether the Seventh Amendment requires that a jury decides meaning of disputed terms of art within the patent claim, the portion of the patent document that defines the patentee’s rights.

The petitioner Markman owns a patent to a system that keeps track of clothing as it moves through the dry-cleaning process.

Markman sued the respondent Westview Instruments alleging that Westview’s products infringe the patent.

Although the jury found that it did infringed it, the District Court granted the directive verdict nonetheless on the ground that Westview’s device in contrast to Markman’s is unable to track what was described as inventory as that word is used in the patent claim.

Markman appealed arguing that the Seventh Amendment required the jury not to judge to interpret the term inventory when, as here, evidences introduced to trial without its meaning.

The Court of Appeals affirmed holding that it was consistent with the Seventh Amendment the judges construe patent term.

In an opinion filed with the Clerk of Court today, we affirm the judgment of the Court of Appeals.

The Seventh Amendment right of trial by jury is the right which existed under the English common law when the amendment was adapted and we therefore looked to 18th century practice to assess the substance of the common law right that the Seventh Amendment was intended to preserve.

Given that infringement case arise they were at the time of the founding, tried before a jury, we have to determine whether particular trial issue, here a patent claim construction, must be decided by jury in order to preserve the essence of the right to a jury trial that existed at the appropriate time.

There is no direct antecedent to modern claim construction in the historical sources and 18th century patent cases reveal no analogous practice supporting the Markman’s contention that juries construed the terms of the patent.

To the extent that any analog responsible it seems to work against Markman’s position in fact.

Accordingly we look elsewhere to characterize this issue in order to allocate it as between judge and jury.

When we do existing precedents, the relative interpretive skills of judges and juries, and the statutory policy considerations to all favor allocating this position to the judge.

We therefore hold that the construction of terms within a patent claim or even terms of art falls within the province of the court.

Our opinion is unanimous.