Executive Intellectual Property Bulletin
Interpretation of U.S. Patent Claims Is NOT An Issue For The Jury To Decide
The United States Supreme Court held unanimously (9-0) that "the construction [interpretation] of a patent, including terms of art within the claims, is exclusively within the province of the [trial] court," and thus not an issue to be heard by the jury in an action for infringement of the patent. Markman v. Westview Instruments, Inc., No. 95-26, decided April 23, 1996. The decision explictly rejects the argument that the Constitutional right to a jury trial in certain civil matters applies to the determination of the meaning of words in a patent claim. The practical impact of the decision, which upholds an earlier controversial holding of the Court of Appeals for the Federal Circuit (CAFC), is already having enormous impact on how patent litigation is conducted. This in turn poses significant strategic decisions for patent owners and attorneys who must draft patent claims to ensure that a trial court will interpret the claims to the benefit of the patentee.
Markman owns a patent on a computerized system for managing the dry cleaning process by ensuring that "an inventory total" is accurately kept despite "spurious additions to inventory." Westview markets a simpler but competing system that tracks an inventory of invoices and transaction totals but not the total number of articles of clothing or additions to that total. At trial, Markman argued that Westview infringed the patent because the claim term "inventory" should be construed to mean cash paid for the dry cleaned clothes or the invoices for the dry cleaning services. The trial judge rejected the jury's agreement with Markman's claim interpretation and ruled as a matter of law that "inventory" means articles of clothing, which the Westview system does not track; thus, Westview did not infringe. Markman's appeal to the CAFC was unsuccessful, and the Supreme Court affirmed.
Following the earlier CAFC decision, trial courts have adopted a variety of new procedures to interpret patent claims, notably the "Markman Hearing" and "Markman Bench Trial." In these proceedings, the trial judge decides the scope of the claims before a jury is chosen. These proceedings can have a "mini-trial" atmosphere (and expense!), including multiple days of testimony and cross-examination of expert witnesses offering conflicting opinions as to the meaning of the words of the claims. Another new trial court procedure is to hear evidence on claim construction at trial, but send the jury into the jury room bound by the judge's interpretation of the claims despite the jury having heard all of the conflicting testimony on claim interpretation during the trial. One court has barred expert testimony on patent law issues despite the common practice of using experts to advise judges in a complex area of the law in which trial judges often have little experience. A real risk for patent owners is that they will pay for additional proceedings, or the full expense of trial, only to have the judge decide key issues that might have resolved the entire case earlier, made the expense of the trial unnecessary, or at least influenced the patentee to argue the case differently.
Effective licensing and litigation by patent owners begin with effective patent prosecution in the US Patent and Trademark Office. Thus, the practical impact of the Markman decision is enormous. Patent owners and their attorneys should thoroughly review portfolios to ensure that claim language is appropriate for interpretation by trial judges in pre-trial proceedings such as motions for summary judgment. Various procedures may be available to address deficiencies in issued and pending patents, thus improving the ability of the patent owner to enforce their patents despite challenges to the interpretation of the claims. Similarly, evaluation of the scope of adverse patents in licensing, litigation or opinion practice must seriously consider the pivotal role of "Markman" pre-trial proceedings, summary judgment, and other procedures that trial courts are likely to employ in the future. More than ever, effective patent portfolio management depends on strategic planning, careful claim drafting during prosecution, and regular review of competitive products to guide enforcement, licensing, and future patenting strategies.
For more information on this topic and how these new guidelines may affect US industry and trade, please contact any of the attorneys at Schwegman, Lundberg & Woessner, P.A. at 612-339-0331 or by facsimile at 612-339-3061. A copy of the Markman decision can be viewed and printed from Schwegman, Lundberg & Woessner, P.A.'s Internet Web site (http://www.slwk.com).
