Marksman v. Westview Instruments, Inc.
517 U.S. 370 (1996)
Marksman invented and received
a patent on a system for tracking inventory in a dry-cleaning store. He
sued Westview and Althon (who were using a similar system) for infringement.
Westview argued that their
system was different because it "merely recorded an inventory of
receivables by tracking invoices and transaction totals rather than to
record and tract an inventory of articles of clothing."
Westview was tracking money
and invoices, not clothes. The question was whether 'money' was
'inventory' in the same way that 'clothes' were 'inventory.'
The Jury found for Marksman,
but the Judge reversed as a matter of law. Marksman appealed.
The jury listened to the
evidence and found Westview to be an infringer. However, the judge
decided that the jury was not constructing the word 'inventory'
correctly, and that based on the proper construction, it would be
impossible for Westview's system to be infringing.
Basically, the judge felt
that Westview's system would not infringe on Marksman's patent because
in his opinion, the word 'inventory' in Marksman's patent should be
construed to mean 'clothes' and didn't include things like money or
The Appellate Court affirmed.
The Appellate Court found
that the interpretation of claim terms (like the word 'inventory') was
the exclusive province of the court, and the 7th Amendment was consistent with that.
Basically, the terms in a
claim were purely a matter of law, so a court could decide them, not a
matter of fact for a jury to decide.
The US Supreme Court affirmed.
The US Supreme Court found
that historically infringement actions were "tried at law" (as
opposed to equity), and so the 7th Amendment right to a jury applied.
However, the Court found
that historically, patents were much simpler and did not require the
same level of interpretation of claim construction. The Court found
that when the first cases arose that required an interpretation of claim
construction (in the mid 1800s), it was the judges that construed the
meaning of the words, not the jury.
Therefore, based on the
"historical test," the 7th Amendment did not require that a jury interpret the
The Court looked at several
treatises as well as some old case law, and found nothing to indicate
that courts ever allowed juries to resolve the meaning of terms of art in
construing a patent.
The Court found that patent
construction is complicated, and a judge who dealt in patent law would be
much better equipped to understand the nuances than a jury would.
The Court found that
"where history and precedent provide no clear answers, functional
considerations also play their part in the choice between judge and
The Court found that it is
important that different courts construe terms similarly. The only way
to do that was to have the judges construe the terms. If the juries
construed the terms, different juries would differ from each other and
there would be no way for a patent drafter to know how to write a claim.
Note that the Appellate Court
found that claim construction was purely a matter of law so there was no
question that it was something for a judge to decide, while the US
Supreme Court found that it was a mixed matter of law and matter of fact.
The US Supreme Court just
made a practical determination that judges could handle claim
construction better than juries, so they came to the same conclusion in
One problem with this decision
that wasn't considered was the fact that questions of law are reviewed de
novo, while questions of fact are not reviewable by an appellate court.
The effect of this decision was that pretty much every loser at the trial
level appealed, because you just get a free do-over at the appellate
See Cybor Corp. FAS
Technologies, Inc. (138 F.3d 1448