Markman v. Westview Instruments, Inc.

Markman v. Westview Instruments, Inc.
Supreme Court of the United States
Argued January 8, 1996 Decided April 23, 1996
Full case name	Herbert Markman and Positek, Incorporated, Petitioners v. Westview Instruments, Incorporated and Althon Enterprises, Incorporated
Citations	517 U.S. 370 (more) 116 S. Ct. 1384; 134 L. Ed. 2d 577; 1996 U.S. LEXIS 2804; 64 U.S.L.W. 4263; 38 U.S.P.Q.2D (BNA) 1461; 96 Cal. Daily Op. Service 2788; 96 Daily Journal DAR 4642; 9 Fla. L. Weekly Fed. S 540
Prior history	Directed verdict for defendant, affirmed by Court of Appeals for the Federal Circuit
Subsequent history	None
Holding
Interpretation of patent claim terms is a matter of law for the court to decide.
Court membership
Chief Justice William Rehnquist Associate Justices John P. Stevens · Sandra Day O'Connor Antonin Scalia · Anthony Kennedy David Souter · Clarence Thomas Ruth Bader Ginsburg · Stephen Breyer
Case opinions
Majority	Souter, joined by unanimous
Laws applied
U.S. Const. amend. VII

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), is a United States Supreme Court case on whether the interpretation of patent claims is a matter of law or a question of fact. An issue designated as a matter of law is resolved by the judge, and an issue construed as a question of fact is determined by the jury.

In general, the effectiveness of a particular patent depends on its potential at blocking competitors. The key for a patent holder is getting the proper definition of words used in the patent to allow blocking of the particular troublesome competitive product. Prior to this decision, juries had the responsibility of deciding what the words used in patent claims meant. Opposing results in cases with similar facts were common, and a perception arose that the outcome of such trials was somewhat arbitrary. In Markman, the Court held that judges, not juries, would evaluate and decide the meaning of the words used in patent claims. Judges were to look at four sources for definitions in order of priority:

1. The written description accompanying the patent claims is most relevant;
2. The documentation of the history of the patent as it went through the application;
3. Standard dictionaries of English;
4. Finally, if all else fails, expert testimony from experts "skilled in the art" at issue.

This case has had a significant impact on the patent litigation process in the United States. Many jurisdictions now hold Markman hearings to construe patent claims prior to the start of the actual trial. Patent infringement suits now often settle after this stage of the litigation process.

Supreme Court decision

In a unanimous ruling written by Justice David Souter, the court affirmed the judgment of the circuit court, holding that:

The construction of a patent, including terms of art within its claim, is exclusively within the province of the court.

Law firms involved

Markman was represented in the original trial by the law firm of Duane Morris.^[1] and by the law firm of Eckert, Seamans, Cherin & Mellott on appeal. Defendants were represented by the law firm of Gollatz, Griffin, Ewing & McCarthy on appeal.^[2]

See also

• List of United States Supreme Court cases, volume 517
• List of United States Supreme Court cases
• Lists of United States Supreme Court cases by volume
• List of United States Supreme Court cases by the Rehnquist Court

References

1. ^ Represented clients in Markman v. Westview Instruments, Inc., Duane Morris
2. ^ Summary of Federal Circuit case and decision, April 5, 1995

External links

• Findlaw Copy of the Supreme Court Case