Cybor Corp. FAS Technologies, Inc.
138 F.3d 1448 (1998)
FAS invented and got a patent
on a pump for squirting liquids onto semiconductors. They sued Cybor, who
had a patent on a similar pump, for infringement.
Cybor argued that the claims
of their patent were different than the claims in FAS's patent.
At trial, the Judge looked at
the words in the claims, and told the Jury what those words should be
interpreted to mean.
Basically, the Judge was the
one who construed the meaning of the claims, not the Jury.
The Trial Court found for FAS
and invalidated Cybor's patent. Cybor appealed.
Cybor argued that the Trial
Court misconstrued the claims in their patent. Cybor argued that how
claims should be construed was a question of fact for a jury to decide,
and not a question of law for a judge to decide.
The Appellate Court affirmed.
The Appellate Court found
that there are two steps to an infringement analysis:
First, the judge determines
the scope and meaning of the patent claims asserted.
Second, the properly
construed claims are compared to the allegedly infringing device.
The Court looked to Marksman
v. Westview Instruments, Inc. (517
U.S. 370 (1996)), and found that claim construction was a question of law
for a judge to decide.
It is arguable that that is
what the US Supreme Court actually said in Marksman. More likely, the US Supreme Court found
that claim construction was a mixed question of law and fact, but that
for various reasons it was more practical to let a judge decide than a
The Court looked to how the
Trial Judge construed the claim construction, and agreed with his
In a dissent it was argued
that the US Supreme Court in Marksman
didn't say that claim construction was a pure matter of law, they said
that it "falls somewhere between a pristine legal standard and a
single historical fact."
The problem with assuming
that claim construction is purely a question of law has to do with
appellate review. Appellate courts review questions of law de novo and do not have to give any deference to what
a trial court decided. If there is a question of fact, than the trial
court is given some deference because they were there to actually see the
witnesses and evidence.
That means that pretty much
every loser at the trial level will appeal because they get a free
'do-over' at the appellate court, and that's inefficient.
In a concurrence, it was
argued that since claim construction is a mixed question of law and fact,
the appellate courts should grant deference to the trial courts in their