Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`116 S.Ct. 1384
`Supreme Court of the United States
`
`Herbert MARKMAN and Positek, Inc., Petitioners,
`v.
`WESTVIEW INSTRUMENTS,
`INC. and Althon Enterprises, Inc.
`
` | Argued Jan. 8,
`No. 95–26.
`1996.
` | Decided April 23, 1996.
`
`Holder of patent for inventory control method for use in dry
`cleaning business brought patent infringement action against
`competitor. The United States District Court for the Eastern
`District of Pennsylvania, Marvin Katz, J., entered judgment
`as matter of law for competitor, despite jury's finding of
`infringement. The Court of Appeals for the Federal Circuit, 52
`F.3d 967,affirmed, ruling that interpretation of patent's claim
`terms was exclusive province of court. Certiorari was granted.
`The Supreme Court, Justice Souter, held that: (1) patent
`infringement actions descended from actions at law, such that
`Seventh Amendment required trial by jury; (2) common-law
`practice at time Seventh Amendment was adopted did not
`require interpretation of claims, or terms of art, by jury rather
`than judge; and (3) construction of patent, including terms of
`art within claim, was exclusively within province of court, in
`view of existing precedent, suitability of interpretation issues
`for determination by judge, and importance of uniformity in
`treatment of given patent.
`
`Affirmed.
`
`West Headnotes (14)
`
`[1]
`
`Patents
`Assertion of Claims
`Patents
`Specifications and Drawings; Written
`Description
`
`Patent must describe exact scope of invention
`and its manufacture to secure to patentee all to
`which patentee is entitled, and to apprise public
`of what is still open to them; these objectives
`are served by both patent specification, which
`describes invention in such full, clear, concise,
`and exact terms as to enable any person skilled
`
`in the art to make and use invention, and
`patent's claims, which particularly point out and
`distinctly claim subject matter which applicant
`regards as invention. 35 U.S.C.A. § 112.
`
`537 Cases that cite this headnote
`
`[2]
`
`Patents
`Assertion of Claims
`
`[3]
`
`Patent claim defines scope of patent grant,
`and functions to forbid not only exact copies
`of invention, but products that go to heart of
`invention yet avoid literal language of claim by
`making noncritical change.
`
`102 Cases that cite this headnote
`
`Patents
`Language of claims in general
`Patents
`In general; comparison with patent claims
`
`Victory in patent infringement suit requires
`finding
`that patent claim covers alleged
`infringer's product or process, which in turn
`necessitates determination of what words in
`claim mean. 35 U.S.C.A. § 271(a).
`
`654 Cases that cite this headnote
`
`[4]
`
`Jury
`
`Nature of Cause of Action or Issue in
`General
`Jury
`
`Legal or Equitable Actions or Issues
`
`Under “historical test” for determining right to
`jury trial under Seventh Amendment, court asks
`first whether it is dealing with cause of action that
`either was tried at law at time amendment was
`adopted or was at least analogous to action that
`was tried at law at that time; if action in question
`belongs in law category, court then asks whether
`particular trial decision must fall to jury in order
`to preserve substance of common-law right as it
`existed in 1791. U.S.C.A. Const.Amend. 7.
`
`44 Cases that cite this headnote
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`1
`
`SAMSUNG 1046
`Samsung Electronics v. SmartFlash
`CBM2014-00199
`
`

`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`[5]
`
`Jury
`
`Legal or Equitable Actions or Issues
`
`In determining whether party is entitled to jury
`trial under Seventh Amendment, statutory action
`is first compared to 18th-century actions brought
`in courts of England prior to merger of courts of
`law and equity. U.S.C.A. Const.Amend. 7.
`
`14 Cases that cite this headnote
`
`[6]
`
`Jury
`
`Patent and copyright cases
`Patents
`In general; nature and grounds
`
`Modern patent infringement action descended
`from infringement actions tried at law in 18th
`century; thus, Seventh Amendment requires that
`patent infringement cases today be tried to
`jury, as their predecessors were more than two
`centuries ago. U.S.C.A. Const.Amend. 7.
`
`there is no exact antecedent, best hope lies in
`comparing modern practice to earlier ones whose
`allocation to court or jury is known, seeking best
`analogy that can be drawn between old and new.
`U.S.C.A. Const.Amend. 7.
`
`16 Cases that cite this headnote
`
`[9]
`
`Jury
`
`Patent and copyright cases
`
`Seventh Amendment did not require that jury,
`rather than judge, construe claims in patent
`and, particularly, terms of art, as common-
`law practice at time Seventh Amendment was
`adopted did not support patentee's assertion
`that jury interpreted patent claims at that time;
`closest historical analogy was to construction
`of specifications for which there was no
`established
`jury practice, and
`judges, not
`jury, ordinarily construed written documents.
`U.S.C.A. Const.Amend. 7.
`
`40 Cases that cite this headnote
`
`169 Cases that cite this headnote
`
`[7]
`
`Jury
`
`Nature of Cause of Action or Issue in
`General
`
`Whether Seventh Amendment requires that
`particular issue in jury trial be determined by
`jury depends on whether jury must shoulder this
`responsibility as necessary to preserve substance
`of common-law right of trial by jury; only those
`incidents which are regarded as fundamental, as
`inherent in and of essence of system of trial
`by jury, are placed beyond reach of legislature.
`U.S.C.A. Const.Amend. 7.
`
`20 Cases that cite this headnote
`
`[8]
`
`Jury
`
`Nature of Cause of Action or Issue in
`General
`
`In evaluating substance of common-law right,
`for purpose of determining whether Seventh
`Amendment requires that particular issue in jury
`trial be determined by jury, court should use
`historical method, similar to characterizing suits
`and actions within which issue arises; where
`
`[10]
`
`Patents
`Questions of law or fact
`
`Construction of patent, including terms of art
`within claim, is exclusively within province
`of court, not
`jury,
`in view of existing
`precedent, suitability of interpretation issues
`for determination by judge, and importance of
`uniformity in treatment of given patent.
`
`1309 Cases that cite this headnote
`
`[11]
`
`Patents
`Questions of law or fact
`
`is special occupation,
`Patent construction
`requiring, like all others, special training and
`practice; judge, from training and discipline, is
`more likely to give proper interpretation to such
`instruments than jury, and judge is, therefore,
`more likely to be right, in performing such duty,
`than jury can be expected to be.
`
`57 Cases that cite this headnote
`
`[12]
`
`Patents
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`2
`
`

`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`Questions of law or fact
`
`Although question of meaning of term of art in
`patent claim is subject of testimony requiring
`credibility determinations, such meaning is
`more properly determined by
`judge
`than
`jury, as any credibility determinations will
`be subsumed within necessarily sophisticated
`analysis of whole document, required by
`standard construction rule that term can be
`defined only
`in way
`that comports with
`instrument as whole; jury's capabilities to
`evaluate demeanor, to sense mainsprings of
`human conduct, or
`to reflect community
`standards, are much less significant than trained
`ability to evaluate testimony in relation to overall
`structure of patent.
`
`597 Cases that cite this headnote
`
`[13]
`
`Patents
`Questions of law or fact
`
`Importance of uniformity in treatment of given
`patent supported allocation of all issues of patent
`claim construction, including construction of
`terms of art, to court rather than jury; whereas
`issue preclusion could not be asserted against
`new and independent infringement defendants,
`treating interpretive issues as purely legal would
`promote intrajurisdictional certainty through
`application of stare decisis.
`
`1021 Cases that cite this headnote
`
`[14]
`
`Patents
`Reissue
`
`US Patent RE33,054. Reissue Patent Cited.
`
`11 Cases that cite this headnote
`
`**1386 *370 Syllabus *
`
`Petitioner Markman owns the patent to a system that tracks
`clothing through the dry-cleaning process using a keyboard
`and data processor to generate transaction records, including
`a bar code readable by optical detectors. According to
`the patent's claim, the portion of the patent document
`
`that defines the patentee's rights, Markman's product can
`“maintain an inventory total” and “detect and localize
`spurious additions to inventory.” The product of respondent
`Westview Instruments, Inc., also uses a keyboard and
`processor and lists dry-cleaning charges on bar-coded tickets
`that can be read by optical detectors. In this infringement
`suit, after hearing an expert witness testify about the meaning
`of the claim's language, the jury found that Westview's
`product had infringed Markman's patent. The District Court
`nevertheless directed a verdict for Westview on the ground
`that its device is unable to track “inventory” as that term is
`used in the claim. The Court of Appeals affirmed, holding the
`interpretation of claim terms to be the exclusive province of
`the court and the Seventh Amendment to be consistent with
`that conclusion.
`
`Held: The construction of a patent, including terms of art
`within its claim, is exclusively within the province of the
`court. Pp. 1389–1396.
`
`(a) The Seventh Amendment right of trial by jury is the
`right which existed under the English common law when the
`Amendment was adopted. Baltimore & Carolina Line, Inc. v.
`Redman, 295 U.S. 654, 657, 55 S.Ct. 890, 891, 79 L.Ed. 1636.
`Thus, the Court asks, first, whether infringement cases either
`were tried at law at the time of the founding or are at least
`analogous to a cause of action that was. There is no dispute
`that infringement cases today must be tried before a jury, as
`their predecessors were more than two centuries ago. This
`conclusion raises a second question: whether the particular
`trial issue (here a patent claim's construction) is necessarily
`a jury issue. This question is answered by comparing the
`modern practice to historical sources. Where there is no exact
`antecedent in the common law, the modern practice should
`be compared to earlier practices whose allocation to court or
`jury is known, and the *371 best analogy that can be drawn
`between an old and the new must be sought. Pp. 1389–1390.
`
`(b) There is no direct antecedent of modern claim construction
`in the historical sources. The closest 18th-century analogue
`**1387 to modern claim construction seems to have
`been the construction of patent specifications describing the
`invention. Early patent cases from England and this Court
`show that judges, not juries, construed specification terms.
`No authority from this period supports Markman's contention
`that even if judges were charged with construing most patent
`terms, the art of defining terms of art in a specification fell
`within the jury's province. Pp. 1390–1393.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`3
`
`

`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`(c) Since evidence of common-law practice at the time
`of the framing does not entail application of the Seventh
`Amendment's jury guarantee to the construction of the claim
`document, this Court must look elsewhere to characterize this
`determination of meaning in order to allocate it as between
`judge or jury. Existing precedent, the relative interpretive
`skills of judges and juries, and statutory policy considerations
`all favor allocating construction issues to the court. As the
`former patent practitioner, Justice Curtis, explained, the first
`issue in a patent case, construing the patent, is a question of
`law, to be determined by the court. The second issue, whether
`infringement occurred, is a question of fact for a jury. Winans
`v. Denmead, 15 How. 330, 338, 14 L.Ed. 717. Contrary to
`Markman's contention, Bischoff v. Wethered, 9 Wall. 812, 19
`L.Ed. 829, and Tucker v. Spalding, 13 Wall. 453, 20 L.Ed.
`515, neither indicate that 19th-century juries resolved the
`meaning of patent terms of art nor undercut Justice Curtis's
`authority. Functional considerations also favor having judges
`define patent terms of art. A judge, from his training and
`discipline, is more likely to give proper interpretation to
`highly technical patents than a jury and is in a better position
`to ascertain whether an expert's proposed definition fully
`comports with the instrument as a whole. Finally, the need for
`uniformity in the treatment of a given patent favors allocation
`of construction issues to the court. Pp. 1393–1396.
`
`52 F.3d 967 (C.A.Fed.1995) , affirmed.
`
`SOUTER, J., delivered the opinion for a unanimous Court.
`
`Attorneys and Law Firms
`
`William B. Mallen, for petitioners.
`
`*372 Frank H. Griffin, III, Media, PA, for respondents.
`
`Opinion
`
`Justice SOUTER delivered the opinion of the Court.
`
`The question here is whether the interpretation of a so-called
`patent claim, the portion of the patent document that defines
`the scope of the patentee's rights, is a matter of law reserved
`entirely for the court, or subject to a Seventh Amendment
`guarantee that a jury will determine the meaning of any
`disputed term of art about which expert testimony is offered.
`We hold that the construction of a patent, including terms of
`art within its claim, is exclusively within the province of the
`court.
`
`*373 I
`
` [2]
`[1]
` The Constitution empowers Congress “[t]o promote
`the Progress of Science and useful Arts, by securing for
`limited Times to Authors and Inventors the exclusive Right
`to their respective Writings and Discoveries.” Art. I, § 8,
`cl. 8. Congress first exercised this authority in 1790, when
`it provided for the issuance of “letters patent,” Act of Apr.
`10, 1790, ch. 7, § 1, 1 Stat. 109, which, like their modern
`counterparts, granted inventors “the right to exclude others
`from making, using, offering for sale, selling, or importing
`the patented invention,” in exchange for full disclosure of
`an invention, H. Schwartz, Patent Law and Practice 1, 33
`(2d ed.1995). It has long been understood that a patent must
`describe the exact scope of an invention and its manufacture
`to “secure to [the patentee] all to which he is entitled, [and] to
`apprise the public of what is still open to them.” McClain v.
`Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 77, 35 L.Ed. 800
`(1891). Under the modern American system, these objectives
`are served by two distinct elements of a patent document.
`First, it contains a specification describing the invention “in
`such full, clear, concise, and exact **1388 terms as to
`enable any person skilled in the art ... to make and use the
`same.” 35 U.S.C. § 112; see also 3 E. Lipscomb, Walker
`on Patents § 10:1, pp. 183–184 (3d ed. 1985) (Lipscomb)
`(listing the requirements for a specification). Second, a
`patent includes one or more “claims,” which “particularly
`poin[t] out and distinctly clai[m] the subject matter which
`the applicant regards as his invention.” 35 U.S.C. § 112. “A
`claim covers and secures a process, a machine, a manufacture,
`a composition of matter, or a design, but never the function
`or result of either, nor the scientific explanation of their
`operation.” 6 Lipscomb § 21:17, at 315–316. The claim
`“define[s] the scope of a patent grant,” 3 id., § 11:1, at
`280, and functions to forbid not only exact copies of an
`invention, but products that go to “the heart of an invention
`but avoids the literal language of the claim by making a *374
`noncritical change,” Schwartz, supra, at 82. 1 In this opinion,
`the word “claim” is used only in this sense peculiar to patent
`law.
`
`[3]
` Characteristically, patent lawsuits charge what is
`known as infringement, Schwartz, supra, at 75, and rest
`on allegations that the defendant “without authority ma[de],
`use[d] or [sold the] patented invention, within the United
`States during the term of the patent therefor....” 35 U.S.C.
`§ 271(a). Victory in an infringement suit requires a finding
`that the patent claim “covers the alleged infringer's product or
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`4
`
`

`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`process,” which in turn necessitates a determination of “what
`the words in the claim mean.” Schwartz, supra, at 80; see also
`3 Lipscomb § 11:2, at 288–290.
`
`Petitioner in this infringement suit, Markman, owns United
`States Reissue Patent No. 33,054 for his “Inventory Control
`and Reporting System for Drycleaning Stores.” The patent
`describes a system that can monitor and report the status,
`location, and movement of clothing in a dry-cleaning
`establishment. The Markman system consists of a keyboard
`and data processor to generate written records for each
`transaction, including a bar code readable by optical detectors
`operated by employees, who log the progress of clothing
`through the dry-cleaning process. Respondent Westview's
`product also includes a keyboard and processor, and it lists
`charges for the dry-cleaning services on bar-coded tickets that
`can be read by portable optical detectors.
`
`against
`suit
`infringement
`an
`brought
`Markman
`Westview and Althon Enterprises, an operator of
`*375 using Westview's
`dry-cleaning establishments
`products (collectively, Westview). Westview responded that
`Markman's patent is not infringed by its system because the
`latter functions merely to record an inventory of receivables
`by tracking invoices and transaction totals, rather than to
`record and track an inventory of articles of clothing. Part of
`the dispute hinged upon the meaning of the word “inventory,”
`a term found in Markman's independent claim 1, which states
`that Markman's product can “maintain an inventory total”
`and “detect and localize spurious additions to inventory.”
`The case was tried before a jury, which heard, among others,
`a witness produced by Markman who testified about the
`meaning of the claim language.
`
`After the jury compared the patent to Westview's device, it
`found an infringement of Markman's independent claim 1
`and dependent claim 10. 2 The District Court nevertheless
`granted Westview's deferred motion for judgment as a matter
`of law, one of its reasons being that the term “inventory”
`in Markman's patent encompasses “both cash inventory and
`the actual physical inventory of articles of clothing.” 772
`F.Supp. 1535, 1537–1538 (E.D.Pa.1991). Under the trial
`court's construction of the patent, the production, **1389
`sale, or use of a tracking system for dry cleaners would not
`infringe Markman's patent unless the product was capable of
`tracking articles of clothing throughout the cleaning process
`and generating reports about their status and location. Since
`Westview's system cannot do these things, the District Court
`directed a verdict on the ground that Westview's device does
`
`not have the “means to maintain an inventory total” and thus
`cannot “ ‘detect and localize spurious additions to inventory
`as well as spurious deletions therefrom,’ ” as required by
`claim 1. Id., at 1537.
`
`*376 Markman appealed, arguing it was error for the District
`Court to substitute its construction of the disputed claim
`term ‘inventory’ for the construction the jury had presumably
`given it. The United States Court of Appeals for the Federal
`Circuit affirmed, holding the interpretation of claim terms
`to be the exclusive province of the court and the Seventh
`Amendment to be consistent with that conclusion. 52 F.3d
`967 (1995). Markman sought our review on each point, and
`we granted certiorari. 515 U.S. 1192, 116 S.Ct. 40, 132
`L.Ed.2d 921 (1995). We now affirm.
`
`II
`
`[4]
` The Seventh Amendment provides that “[i]n Suits at
`common law, where the value in controversy shall exceed
`twenty dollars, the right of trial by jury shall be preserved....”
`U.S. Const., Amdt. 7. Since Justice Story's day, United States
`v. Wonson, 28 F. Cas. 745, 750 (No. 16,750) (CC Mass.
`1812), we have understood that “[t]he right of trial by jury
`thus preserved is the right which existed under the English
`common law when the Amendment was adopted.” Baltimore
`& Carolina Line, Inc. v. Redman, 295 U.S. 654, 657, 55
`S.Ct. 890, 891, 79 L.Ed. 1636 (1935). In keeping with our
`longstanding adherence to this “historical test,” Wolfram, The
`Constitutional History of the Seventh Amendment, 57 Minn.
`L.Rev. 639, 640–643 (1973), we ask, first, whether we are
`dealing with a cause of action that either was tried at law
`at the time of the founding or is at least analogous to one
`that was, see, e.g., Tull v. United States, 481 U.S. 412, 417,
`107 S.Ct. 1831, 1835, 95 L.Ed.2d 365 (1987). If the action
`in question belongs in the law category, we then ask whether
`the particular trial decision must fall to the jury in order to
`preserve the substance of the common-law right as it existed
`in 1791. See infra, at 1389–1390. 3
`
`*377 A
`
` [6]
`[5]
` As to the first issue, going to the character of
`the cause of action, “[t]he form of our analysis is familiar.
`‘First we compare the statutory action to 18th-century actions
`brought in the courts of England prior to the merger of the
`courts of law and equity.’ ” Granfinanciera, S.A. v. Nordberg,
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
`
`5
`
`

`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`492 U.S. 33, 42, 109 S.Ct. 2782, 2790, 106 L.Ed.2d 26 (1989)
`(citation omitted). Equally familiar is the descent of today's
`patent infringement action from the infringement actions tried
`at law in the 18th century, and there is no dispute that
`infringement cases today must be tried to a jury, as their
`predecessors were more than two centuries ago. See, e.g.,
`Bramah v. Hardcastle, 1 Carp. P.C. 168 (K.B.1789).
`
`2117, 2124, 100 L.Ed.2d 743 (1988). We have also spoken of
`the line as one between issues of fact and law. See Baltimore
`& Carolina Line, supra, at 657, 55 S.Ct., at 891; see also Ex
`parte Peterson, supra, at 310, 40 S.Ct., at 546; Walker v. New
`Mexico & Southern Pacific R. Co., supra, at 597, 17 S.Ct., at
`422; but see Pullman–Standard v. Swint, 456 U.S. 273, 288,
`102 S.Ct. 1781, 1789, 72 L.Ed.2d 66 (1982).
`
`B
`
`This conclusion raises the second question, whether a
`particular issue occurring within a jury trial (here the
`construction of a patent claim) is itself necessarily a jury
`issue, the guarantee being essential to preserve the right to
`a jury's resolution of the ultimate dispute. In some instances
`the answer to this second question may be easy because of
`clear historical evidence that the very subsidiary question
`was so regarded under the English practice of leaving the
`issue for a jury. But when, as here, the old practice provides
`no clear answer, see infra, at 1390–1391, we are forced to
`make a judgment about the scope of the Seventh Amendment
`guarantee without the benefit of any foolproof test.
`
`**1390 [7]
` The Court has repeatedly said that the answer
`to the second question “must depend on whether the jury
`must shoulder this responsibility as necessary to preserve
`the ‘substance of the common-law right of trial by jury.’
`” Tull v. United States, supra, at 426, 107 S.Ct., at 1840
`(emphasis added) (quoting Colgrove v. Battin, 413 U.S. 149,
`156, 93 S.Ct. 2448, 2452, 37 L.Ed.2d 522 (1973)); see also
`Baltimore & Carolina Line, supra, at 657, 55 S.Ct., at 891.
`“ ‘ “Only those incidents which are regarded as fundamental,
`as inherent in and of the essence of the system of trial by jury,
`are placed beyond *378 the reach of the legislature.” ’ ” Tull
`v. United States, supra, at 426, 107 S.Ct., at 1840 (citations
`omitted); see also Galloway v. United States, 319 U.S. 372,
`392, 63 S.Ct. 1077, 1088, 87 L.Ed. 1458 (1943).
`
`The “substance of the common-law right” is, however, a
`pretty blunt instrument for drawing distinctions. We have
`tried to sharpen it, to be sure, by reference to the distinction
`between substance and procedure. See Baltimore & Carolina
`Line, supra, at 657, 55 S.Ct., at 891; see also Galloway v.
`United States, supra, at 390–391, 63 S.Ct., at 1087–1088; Ex
`parte Peterson, 253 U.S. 300, 309, 40 S.Ct. 543, 546, 64 L.Ed.
`919 (1920); Walker v. New Mexico & Southern Pacific R. Co.,
`165 U.S. 593, 596, 17 S.Ct. 421, 422, 41 L.Ed. 837 (1897);
`but see Sun Oil Co. v. Wortman, 486 U.S. 717, 727, 108 S.Ct.
`
`[8]
` But the sounder course, when available, is to classify
`a mongrel practice (like construing a term of art following
`receipt of evidence) by using the historical method, much as
`we do in characterizing the suits and actions within which
`they arise. Where there is no exact antecedent, the best hope
`lies in comparing the modern practice to earlier ones whose
`allocation to court or jury we do know, cf. Baltimore &
`Carolina Line, supra, at 659, 660, 55 S.Ct., at 892, 893;
`Dimick v. Schiedt, 293 U.S. 474, 477, 482, 55 S.Ct. 296, 297,
`79 L.Ed. 603 (1935), seeking the best analogy we can draw
`between an old and the new, see Tull v. United States, supra,
`at 420–421, 107 S.Ct., at 1836–1837 (we must search the
`English common law for “appropriate analogies” rather than
`a “precisely analogous common-law cause of action”).
`
`C
`
`[9]
` “Prior to 1790 nothing in the nature of a claim had
`appeared either in British patent practice or in that of the
`*379 American states,” Lutz, Evolution of the Claims of
`U.S. Patents, 20 J. Pat. Off. Soc. 134 (1938), and we have
`accordingly found no direct antecedent of modern claim
`construction in the historical sources. Claim practice did not
`achieve statutory recognition until the passage of the Act of
`July 4, 1836, ch. 357, § 6, 5 Stat. 119, and inclusion of a claim
`did not become a statutory requirement until 1870, Act of July
`8, 1870, ch. 230, § 26, 16 Stat. 201; see 1 A. Deller, Patent
`Claims § 4, p. 9 (2d ed.1971). Although, as one historian
`has observed, as early as 1850 “judges were ... beginning to
`express more frequently the idea that in seeking to ascertain
`the invention ‘claimed’ in a patent the inquiry should be
`limited to interpreting the summary, or ‘claim,’ ” Lutz, supra,
`at 145, “[t]he idea that the claim is just as important if not
`more important than the description and drawings did not
`develop until the Act of 1870 or thereabouts.” Deller, supra,
`§ 4, at 9.
`
`At the time relevant for Seventh Amendment analogies,
`in contrast, it was the specification, itself a relatively new
`development, H. Dutton, The Patent System and Inventive
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` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
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`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`Activity During the Industrial Revolution, 1750–1852, pp.
`75–76 (1984), that represented the key to the patent. Thus,
`patent litigation in that early period was typified by so-called
`novelty actions, testing whether “any essential part of [the
`patent had been] disclosed to the public before,” Huddart
`v. Grimshaw, Dav. Pat. Cas. 265, 298 (K.B.1803), and
`“enablement” **1391 cases, in which juries were asked to
`determine whether the specification described the invention
`well enough to allow members of the appropriate trade to
`reproduce it, see, e.g., Arkwright v. Nightingale, Dav. Pat.
`Cas. 37, 60 (C.P. 1785).
`
`The closest 18th-century analogue of modern claim
`construction seems, then, to have been the construction of
`specifications, and as to that function the mere smattering
`*380 of patent cases that we have from this period 4
`shows no established jury practice sufficient to support an
`argument by analogy that today's construction of a claim
`should be a guaranteed jury issue. Few of the case reports
`even touch upon the proper interpretation of disputed terms
`in the specifications at issue, see, e.g., Bramah v. Hardcastle,
`1 Carp. P.C. 168 (K.B.1789); King v. Else, 1 Carp. P.C.
`103, Dav. Pat. Cas. 144 (K.B.1785); Dollond's Case, 1
`Carp. P.C. 28 (C.P. 1758); Administrators of Calthorp v.
`Waymans, 3 Keb. 710, 84 Eng. Rep. 966 (K.B.1676), and
`none demonstrates that the definition of such a term was
`determined by the jury. 5 This absence of an established
`practice should not surprise us, given the primitive state of
`jury patent practice at the end of the 18th century, when
`juries were still new to the field. Although by 1791 more
`than a century had passed since the enactment of the Statute
`of Monopolies, which provided *381 that the validity of
`any monopoly should be determined in accordance with
`the common law, patent litigation had remained within the
`jurisdiction of the Privy Council until 1752 and hence without
`the option of a jury trial. E. Walterscheid, Early Evolution
`of the United States Patent Law: Antecedents (Part 3), 77 J.
`Pat. & Tm. Off. Soc. 771, 771–776 (1995). Indeed, the state
`of patent law in the common-law courts before 1800 led one
`historian to observe that “the reported cases are destitute of
`any decision of importance.... At the end of the eighteenth
`century, therefore, the Common Law Judges were left to pick
`up the threads of the principles of law without the aid of
`recent and reliable precedents.” Hulme, On the Consideration
`of the Patent Grant, Past and Present, 13 L.Q. Rev. 313, 318
`(1897). Earlier writers expressed similar discouragement at
`patent law's amorphous character, 6 and, as late as the 1830's,
`English commentators were irked by enduring confusion in
`the field. See Dutton, supra, at 69–70.
`
`Markman seeks to supply what the early case reports lack
`in so many words by relying on decisions like Turner v.
`Winter, 1 T.R. 602, 99 Eng. Rep. 1274 (K.B.1787), and
`Arkwright v. Nightingale, Dav. Pat. Cas. 37 (C.P. 1785), to
`argue that the 18th-century juries must have acted as definers
`of patent terms just to reach the verdicts we know they
`rendered in patent cases turning on enablement or novelty.
`But the conclusion simply does not follow. There is no
`more **1392 reason to infer that juries supplied plenary
`interpretation of written instruments in patent litigation than
`in other cases implicating the meaning of documentary terms,
`and we do know that in other kinds of cases during this
`period judges, *382 not juries, ordinarily construed written
`documents. 7 The probability that the judges were doing the
`same thing in the patent litigation of the time is confirmed
`by the fact that as soon as the English reports did begin to
`describe the construction of patent documents, they show
`the judges construing the terms of the specifications. See
`Bovill v. Moore, Dav. Pat. Cas. 361, 399, 404 (C.P. 1816)
`(judge submits question of novelty to the jury only after
`explaining some of the language and “stat[ing] in what terms
`the specification runs”); cf. Russell v. Cowley & Dixon,
`Webs. Pat. Cas. 457, 467–470 (Exch.1834) (construing the
`terms of the specification in reviewing a verdict); Haworth
`v. Hardcastle, Webs. Pat. Cas. 480, 484–485 (1834) (same).
`This evidence is in fact buttressed by cases from this Court;
`when they first reveal actual practice, the practice revealed is
`of the judge construing the patent. See, e.g., Winans v. New
`York & Erie R. Co., 21 How. 88, 100, 16 L.Ed. 68 (1859);
`Winans v. Denmead, 15 How. 330, 338, 14 L.Ed. 717 (1854);
`Hogg v. Emerson, 6 How. 437, 484, 12 L.Ed. 505 (1848); cf.
`Parker v. Hulme, 18 F. Cas. 1138 (No. 10,740) (CC ED Pa.
`1849). These indications of our patent practice are the more
`impressive for being all of a piece with what we know about
`the analogous contemporary practice of interpreting *383
`terms within a land patent, where it fell to the judge, not the
`jury, to construe the words. 8
`
`D
`
`Losing, then, on the contention that juries generally
`had interpretive responsibilities during the 18th century,
`Markman seeks a different anchor for analogy in the more
`modest contention that even if judges were charged with
`construing most terms in the patent, the art of defining terms
`of art employed in a specification fell within the province of
`the jury. Again, however, Markman has no authority from
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
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`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)
`116 S.Ct. 1384, 134 L.Ed.2d 577, 64 USLW 4263, 38 U.S.P.Q.2d 1461...
`
`the period in question, but relies instead on the later case of
`Neilson v. Harford, Webs. Pat. Cas. 328 (Exch.1841). There,
`an exchange between the judge and the lawyers indicated that
`although the construction of a patent was ordinarily for the
`court,