Today in Patent Law Class: Markman v. Westview Instruments

by Dennis Crouch

Today in Patent Law Class, we covered the Supreme Court’s important decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) focusing on the question of whether the patentee has a 7th Amendment right to have a jury decide “genuine factual disputes about the meaning of a patent?”  The Supreme Court’s answer: No, although claim construction might involve underlying factual determinations, the doctrine is ultimately a question of law best decided by a judge.  Id.  Twenty years later, the Supreme Court reiterated these same principle in Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (holding that, underlying factual findings should be given deference on appeal).

The underlying patent (RE33,054) was directed to an inventory control system for a drycleaner.  A jury sided with the patentee and found infringement, but the district court rejected the verdict. Rather, the district court awarded Judgment as a Matter of Law to the defendant on grounds of non-infringement.  The district court particularly considered the claim term “inventory” and construed that term to be tied to individual articles of clothing–as would be necessary to satisfy the claimed inventive result to “detect and localize spurious additions to inventory.”  Under that construction, the defendant could not infringe because its system tracked transactions rather than articles of clothing, and each transaction might include multiple articles.  On appeal, the Federal Circuit issued an in banc affirmance.  Then on certiorari, the Supreme Court also affirmed.  This double affirmance means that the Federal Circuit’s decision also continues to have precedential merit.  Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).

The law-fact divide is an important feature of complex civil litigation procedure — especially patent law.  The importance arises in several different contexts.  In Markman, the question was “who decides” judge or jury; In Teva, the question was appellate deference to district court fact finding; In Microsoft Corp. v. I4I, Justice Breyer explained that the law-fact divide is important for burdens of proof since burdens such as clear-and-convincing-evidence only apply to factual findings and no such burden is associated with issues of law. Microsoft Corp. v. I4I Ltd. Partn., 564 U.S. 91, 114 (2011) (Breyer, J, concurring). In addition, the evidentiary standards tied to the Federal Rules of Evidence applies to issues of fact, and does not (necessarily) bind the inquiry into questions of law.  Thus, in deciding a question of law, a court may consider information that might not be available to a jury when deciding a question of fact.

The Markman hearing quickly became a popular process for district courts to receive argument and evidence before construing the claims (often resulting in summary judgment). Because of their popularity, Markman is – by far – the most cited Supreme Court patent case of the 1990s.   Markman hearings show how timing is also important for the law-fact divide.  Claim construction is decided before trial; leaving juries regularly being seen as irrelevant to questions of infringement and anticipation.  This is especially true when parties craft their proposed claim construction to hone-in on the ultimate questions of infringement or validity.

To support its conclusion that the 7th Amendment does not require a jury trial to decide factual disputes about the meaning of a patent, the Supreme Court first looked to history.  The court suggested that historical preservation analysis is the best approach since the 7th Amendment requires that “trial by jury shall be preserved.”  This amendment was part of the Bill of Rights ratified in 1791 and so the court generally looks back to that time for its historic preservation analysis.  The problem though is that 1791 (and prior) patents did not include claims, and so there was no relevant historic answer as to who decides claim scope. The court then looked to precedent–citing a number of 19th century cases and treatises reflecting that claim construction was a judicial function.  And, the court also concluded that giving the authority to judges would get better results, since judges are better at construing legal documents than juries, and also lead to more uniformity of law.

In Markman, we learned that it is the judge’s role to construe the claims, but courts continued to argue for the next decade+ about claim construction methodology and procedure.  The proposed uniformity was lacking.  In my view, the uniformity has now largely been realized, at least within the court system, once Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) was decided and the dust settled.

9 thoughts on “Today in Patent Law Class: Markman v. Westview Instruments

  1. 4

    Anyone practicing in the 90’s will remember how Markman led to a sea change in how patent litigation was done.

    I wonder if Herb Markman has kept up with how famous his name has become among patent lawyers.

  2. 3

    One of the unfortunate results of making claim interpretation a legal issue is that it encourages appeals.

  3. 2

    Now that “uniformity” in the area of claim construction has now “largely been realised” so that juries are left “irrelevant to questions of infringement and anticipation” is it so, that the only cases going to trial are those in which one or the other protagonist is not ready to settle but, rather, wants to maintain the litigation ongoing for purposes other than to settle the questions whether the asserted claim is infringed and whether it is not valid? Is this ethical? Does Open Sky/VLSI have any relevance? Downstream of the Markman hearing, do the courts still have means at their disposal, to discourage litigants from further burdening the court, from unecessarily consuming precious resources within the system of administration of justice ? If so, how often do the the courts use the tools at their disposal?

    In England, where a “Loser Pays” rule routinely applies, over 90% of cases started are settled long before trial, even without Markman hearings. What is the corresponding figure in the US courts, I wonder.

    1. 2.2

      These data are a bit out of data, but back in 2006, Kesan & Ball calculated that in 2000, only 11% of patent cases reached some sort of judgment on the merits (including pre-trial summary judgments), and only 4% saw a judgment following a trial. In other words, not all that different from the English figures that you cite.

      1. 2.2.2

        That’s useful, Dozens. My figure of 90% is plucked out of memory and also dates from a good 20 years ago, before the sustained pressure of recent years to improve the efficiency of patent litigation. There was a time, long ago, when some litigators in England advanced (in all seriousness) the argument that the extreme expense involved in going all the way to trial was a boon to the efficiency of the system (in that it encouraged early settlement of the action).

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