Markman v. Westview Instruments, Inc.: the Supreme Court Narrows the Jury's Role in Patent Litigation - Elizabeth J. Norman

• Publication year: 1997

Markman v. Westview Instruments, Inc.: The Supreme Court Narrows the Jury's Role in Patent Litigation

The number of patent cases tried to a jury has burgeoned in recent years.¹ From 1968 to 1970, more than ninety-six percent of all patent trials were bench trials;² in the fiscal year 1994, seventy percent of patent trials were tried to a jury.³ Because patent infringement actions begin with interpretation of the often highly technical and complex patent claim, the role of juries in patent litigation suits has become controversial.⁴ The general right to a jury trial in an infringement action has never been seriously questioned.⁵ However, this general right to a jury trial does not address the allocation between the judge and the jury of specific issues that arise within a patent infringement action.⁶ In Markman v. Westview Instruments, Inc.,⁷ the United States Supreme Court addressed whether the interpretation of patent claims is a matter exclusively for the judge or is subject to the Seventh Amendment right to trial by jury.⁸

I. Factual Background

Herbert Markman invented and patented an inventory control system for dry cleaning businesses. The system monitors the progress of customers' clothes through the dry cleaning process.⁹ Markman's system, described in his patent claim as "capable of monitoring and reporting upon the status, location and throughput of inventory in an establishment," keeps a record of all clothing brought in, and generates a customer receipt, a management copy of that receipt, and multiple bar code tags to be attached to the individual articles of clothing.¹⁰ These bar code tags can be read using an optical detector, thus enabling management to reconcile inventory at any point in the dry cleaning process.¹¹

Markman brought a patent infringement claim against Westview, the manufacturer of a device that prints a bar-coded ticket with information about the customer, the articles of clothing to be cleaned, and the amount due; however, the device permanently records only the invoice number, date, and amount.¹² The Westview system cannot track individual articles of clothing.¹³ The specific interpretation issue was whether the term "inventory" as used in Markman's patent claim refers to both the physical inventory (the clothing) and the cash inventory (the invoices) or only to the cash inventory.¹⁴ The jury found infringement of the claim, thus implicitly adopting the interpretation of inventory as only the cash inventory.¹⁵

The district court judge, however, in granting Westview's previously deferred motion for judgment as a matter of law, adopted the broader interpretation of inventory as both the physical and cash inventories and accordingly found no infringement.¹⁶ Markman appealed, and the Court of Appeals for the Federal Circuit affirmed en banc that "in a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim."¹⁷ The United States Supreme Court granted certiorari and unanimously affirmed the court of appeals, holding that patent claim interpretation is exclusively for the court and, thus, removing patent claim interpretation from the jury.¹⁸

II. Legal Background

An inquiry into the jury's role in patent claim interpretation necessarily entails examination of two areas of the law: first, the Seventh Amendment right to trial by jury; second, the jury's role in patent litigation in general and in patent claim interpretation in particular.

The right to a trial by jury has always been considered a basic and fundamental part of American jurisprudence.¹⁹ Justice Story wrote in 1830 that the right to trial by jury must be jealously guarded by the courts.²⁰ However, the scope of the right conferred by the Seventh Amendment²¹ is difficult to discern. The language of the amendment is general, and almost no direct evidence of the intentions of the Framers exists.²²

The early federal courts construed the Seventh Amendment to guarantee a right to jury trial in suits in which legal rights are ascertained and determined. In Parsons v. Bedford,²³ Justice Story explained that the Seventh Amendment phrase "suits at common law" is used in contradistinction to suits in equity or admiralty.²⁴ In Baltimore & Carolina Line v. Redman,²⁵ the Court stated that the right preserved by the Seventh Amendment has the same characteristics as the right that existed under English common law in 1791, the year the Amendment was adopted.²⁶

More recent decisions, however, recognize that the scope of the Seventh Amendment guarantee extends well beyond the common-law causes of action recognized by English law in 1791. In Curtis v. Loether,²⁷ the Court held that the Seventh Amendment guarantee applies to actions enforcing a post-1791 statutory claim founded on legal rights and authorizing legal remedies, even if no such cause of action existed in England in 1791.²⁸ In Tail v. United States,²⁹ the Court interpreted the Seventh Amendment to require a jury trial in actions that are analogous to suits at common law.³⁰ In Ross v. Bernhardt the Court stated that an issue is classified as legal, and therefore subject to the Seventh Amendment guarantee, by considering three factors: (1) the custom of handling such issues in England prior to the merger of the courts of law and equity; (2) the nature of the remedy sought; and (3) the "practical abilities and limitations of juries."³² However, in Tail, the Court held that this third factor has never been considered as an independent basis for extending the Seventh Amendment guarantee.³³ In Granfinanciera S.A. v. Nordberg,³⁴ the Court declared the nature of the remedy sought the more important consideration.³⁵ In 1990, in Chauffeurs, Teamsters & Helpers, Local No. 391 v. Terry,³⁶ the Court affirmed that the nature of the issues tried and the remedy sought, not the action as a whole, determine the right to a jury trial.³⁷

An examination of the jury's role in patent claim interpretation requires a basic understanding of the American patent system. Among the Article I, section 8 enumerated powers granted to Congress is the power to "promote the Progress of Science ... by securing for limited Times to . . . Inventors . . . the exclusive Right to their . . . Discoveries."³⁸ Congress enacted the first Patent Act in 1790; the resulting "first-to-invent system" gives the first true inventor a limited monopoly designed to promote scientific progress by providing incentives to invent.³⁹

Under modern American patent law, in exchange for granting the inventor an exclusive right to control the use, manufacture, and sale of the patented item, the federal government requires the inventor to disclose with great specificity the patented invention.⁴⁰ Disclosure is accomplished through the patent application, which must contain a specification and at least one claim.⁴¹ One or more claims must point out and claim with particularity the subject matter that the patent applicant regards as the invention.⁴²

Patent infringement actions center on two questions. First, the scope and coverage of the patent must be determined through interpretation of the patent claim; second, the device or process in question must be compared to the patent to discover if the defendant has made, used, or sold a device or process in violation of the patent.⁴³ Juries have played a role in addressing the second part of the inquiry since the Patent Act of 1790, which authorized juries to award damages.⁴⁴ The role of juries in answering the first question is more muddled.

A fundamental principle in American jurisprudence, dating back to the earliest days of the Supreme Court, is that construction of written evidence is exclusively for the court.⁴⁵ Indeed, early patent cases in the United States classify patent interpretation as a question of law.⁴⁶

However, within the Federal Circuit,⁴⁷ two distinct lines of patent claim interpretation cases have developed. In one line of cases the Federal Circuit has consistently held that patent claim construction is exclusively a matter of law.⁴⁸ In the other line of cases, beginning with McGill, Inc. v. John Zink Co.,⁴⁹ the Federal Circuit has held that if extrinsic evidence is needed to explain patent claim terms, interpretation is a question of fact for the jury.⁵⁰ Reconciling these approaches...