Chapter §15.02 Judge Versus Jury as Interpreter

• Jurisdiction: United States

§15.02 Judge Versus Jury as Interpreter

[A] Pre-Markman

Prior to the Supreme Court's landmark 1996 decision in Markman v. Westview,¹⁰ the interpretation of patent claims was not generally considered a separate step in the overall analysis of patent infringement. When infringement was tried before a jury, issues of claim interpretation were routinely submitted to the jury (either explicitly or implicitly) and considered part of the jury's overall task in determining infringement.¹¹

[B] Markman v. Westview (U.S. 1996)

In recent years, more patent infringement cases are being tried to juries than to the courts.¹² In Markman v. Westview Instruments,¹³ the Supreme Court held that the Seventh Amendment of the U.S. Constitution¹⁴ does not provide a right to a jury trial for the interpretation of patent claims. Rather, policy concerns dictate that the role of claim interpretation is to be performed by the judge instead of the jury in a jury trial. Markman was a watershed event in the history of U.S. patent litigation, and thus the details of the case merit considerable attention.

Markman, the plaintiff, owned a patent on a system for tracking articles of clothing in a dry-cleaning process.¹⁵ The claims of Markman's patent required that the system include means to maintain an inventory total and that the system be able to "detect and localize spurious additions to inventory as well as spurious deletions therefrom."¹⁶ The key claim interpretation dispute concerned the meaning of "inventory." Because the defendant's accused system tracked only cash invoices, not articles of clothing, Markman introduced expert testimony to support his position that "inventory" meant cash invoices. After the jury found for Markman, the district court granted the defendant's motion for judgment of noninfringement as a matter of law. The district court concluded that the intrinsic evidence (the patent itself and its prosecution history) made clear that "inventory" as used in Markman's patent had to include "items of clothing." Because the accused system did not track clothing, there could be no literal infringement.¹⁷

On appeal, Markman's primary argument was that the Seventh Amendment of the U.S. Constitution guarantees a right to a jury trial on claim interpretation and that the district court had erred by effectively taking that role away from the jury through the grant of judgment as a matter of law (JMOL). The Federal Circuit rejected this argument, and the Supreme Court affirmed. Applying the "historical" test, the Supreme Court explained that although it is clear that English juries were hearing patent infringement cases in 1791 (when the Seventh Amendment was ratified), there was no clear historical antecedent at that time for the practice of claim interpretation. In fact, patent claims were not mentioned by statute in the United States until the Patent Act of 1836 and were not statutorily required until the Patent Act of 1870.

Because the historical test does not answer the question whether judge or jury should construe patent claims in a jury trial of patent infringement, the Supreme Court's decision in Markman ultimately turned on functional (i.e., public policy) considerations. The Court concluded that judges are simply better equipped than jurors to construe the meaning of claim terms based on documentary evidence, because the bread-and-butter work of the judiciary is to construe the meaning of language in legal documents (e.g., contracts and statutes) upon receipt of evidence. Judges understand that this role must be performed in a manner that comports with a "whole contents" approach, that is, the fundamental interpretive canon that a term or phrase in a document must be construed in such a way as to comport with the document as a whole. In this manner a patent's internal coherence is best preserved.

Although some cases may arise in which competing interpretations of patent terms by opposing experts would require that judges make credibility determinations, a traditional province of the jury, "in the main" the Court expects that these determinations will be "subsumed within the necessarily sophisticated analysis of the whole document, required by the standard construction rule that a term can be defined only in a way that comports with the instrument as a whole."¹⁸

The Supreme Court in Markman also cited the importance of the uniform interpretation of a given patent as another policy reason why judges are better suited than juries to interpret patent claims. In the Court's view, "[u]niformity would . . . be ill served by submitting issues of document construction to juries."¹⁹ The treatment of claim interpretation as a "purely legal" issue for the court will promote certainty through stare decisis principles, the Court declared.²⁰ Consistent with the common law system's fundamental principle of "standing by the decision," courts should give due weight and consideration to the decisions of other courts who have previously ruled on the same issues, even in cases where the Federal Circuit has not yet blessed a particular claim interpretation or where collateral estoppel would not apply because a defendant did not have a full and fair opportunity to litigate a particular claim interpretation issue in an earlier proceeding involving the same patent.²¹

[C] Markman Hearings

The federal district courts now typically carry out their claim interpretation responsibilities in the context of a separate pre-trial hearing variously referred to as a "claim interpretation hearing" or a "Markman hearing." Some excellent reference works detail the mechanics and timing of Markham hearings, often critically important and sometimes dispositive.²²

District courts around the country vary widely in their approach to Markman hearings, and no uniform procedure exists.²³ Some district courts conduct the Markman hearing relatively early in a case, perhaps even before the close of discovery. Other courts conduct the Markman hearing in the context of a motion for summary judgment of infringement or noninfringement. A 1997 American Bar Association report indicated that 85 percent of Markman hearings are conducted prior to trial but after the close of discovery.²⁴ The federal district court for the Northern District of California, San Jose, was the first U.S. court to adopt a set of local rules that provide a very detailed procedure and timetable for claim interpretation and other pre-trial patent matters.²⁵

Following a claim interpretation hearing, a district court will typically issue an order setting forth the manner in which the claims will be construed in the remainder of the case.²⁶ Although a number of parties have attempted to obtain immediate Federal Circuit review of district court claim interpretations through the vehicle of a certified question for interlocutory appeal under 28 U.S.C. §1292(b), thus far the Federal Circuit has denied all such appeals.²⁷ Thus, a litigant's chance of getting an early Federal Circuit review of a claim interpretation depends on the grant of a motion for summary judgment on the infringement issue that permits an immediate appeal.²⁸ Absent the district court granting such a summary judgment, claim interpretations generally will not be reviewed by the Federal Circuit until appeal is taken from a final judgment rendered after the completion of trial.

[D] Must a District Court Always Expressly Interpret Claim Terms?

A line of Federal Circuit opinions, stemming from the court's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,²⁹ have failed to clarify the answer to this question. Consider, for example, the scenario in which a district court considers claim terms as used in a patent in suit to have a plain and ordinary meaning, readily understandable, that does not require an express definition for a jury. The district court refuses to provide the jury with any further definition of those terms. Rather, it instructs the jury to give the terms their plain and ordinary meaning. Has the district court reversibly erred?

In a 2016 decision, a 2-1 majority of a Federal Circuit panel said yes. More specifically, the majority in Eon Corp. IP Holdings v. Silver Spring Networks³⁰ held that the Eastern District of Texas court reversibly erred by instructing a jury to interpret disputed claim terms "portable" and "mobile" in patents directed to communication network systems in accordance with their ordinary meanings rather than providing an express definition of those terms. The Eon Corp. majority agreed with accused infringer/appellant Silver Spring that the district court had "improperly delegated to the jury the task of determining claim scope,"³¹ in violation of the Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.³² There the court had held that "[a] determination that a claim term 'needs no construction' or has the 'plain and ordinary meaning' may be inadequate when a term has more than one 'ordinary' meaning or when reliance on a term's 'ordinary' meaning does not resolve the parties' dispute."³³

But dissenting Circuit Judge Bryson countered in Eon Corp. that "[w]hile it is sometimes unclear how far a court must go in a patent case by way of defining claim terms, there is ordinarily no obligation to provide a special definition for terms that have a widely understood ordinary meaning, as long as the court is persuaded that the patent uses the terms in that ordinary sense."³⁴ In the case at bar, Judge Bryson viewed the district court as having permissibly declined accused infringer Silver Spring's request to define the terms expressly (and restrictively). As support Judge Bryson cited inter alia the Circuit's 2015 holding in Summit 6, LLC v. Samsung Elecs. Co.³⁵ that "[b]ecause the plain and ordinary meaning of the disputed claim language is clear, the district court did not err by declining to construe the term."³⁶

More broadly, the Eon Corp. case illustrates that patent claim...