Markman v. Westview Instruments
SCOTUS - 1996 (517 U.S. 370)
- P filed a patent infringement suit against D for his dry cleaning inventory control system.
- There was a dispute over the interpretation of the word inventory in the patent.
- The jury in the trial court returned a verdict for P which the judge set aside because the jury interpreted the word inventory incorrectly.
- P appealed saying that the interpretation of terms in the patent claim are a jury issue.
- Lower court judge found for D, no infringement.
- COA affirmed, no infringement.
- SCOTUS affirmed, no infringement.
- Is a particular issue occurring within a jury trial necessarily a jury issue?
- Not all issues occurring within a jury trial are necessary jury issues (i.e. construction of a patent claim).
- There is no reliable historical basis for the claim that patent claim interpretation should be a jury issue.
- The two elements of a patent case are construing the patent and determining whether infringement occurred. The first element should be determined by the judge, the second element is a question of fact that should be submitted to the jury.
- Where history and precedent provide no clear answers, functional considerations also play their part in the choice between judge and jury to define terms of art.
- One judicial actor is better positioned than another to decide the issue in question…judges!
- The judge is more likely to give a proper interpretation to such instruments than a jury because of training and discipline.
- There is sufficient reason to treat construction of terms of art like many other responsibilities ceded to judges in the normal course of a trial.