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Markman v. Westview Instruments

Supreme Court of the United States

January 8, 1996, Argued ; April 23, 1996, Decided

No. 95-26.

Opinion

 [***581]  [*372]  [**1387]    JUSTICE SOUTER delivered the opinion of the Court.

 The question here is whether the interpretation of a socalled 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

] The Constitution empowers Congress "to 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,  [****7]  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, 35 L. Ed. 800, 12 S. Ct. 76 (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,  [**1388]  concise, and exact  [**582]  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 [****8]  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  [1464]  change," Schwartz, supra, at 82. 2 In this opinion, the word "claim" is used only in this sense peculiar to patent law.

 [****9]   Characteristically, patent lawsuits charge what is known as infringement, Schwartz, supra, at 75, and rest on allegations that the defendant "without authority ma[de], used 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 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.

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517 U.S. 370 *; 116 S. Ct. 1384 **; 134 L. Ed. 2d 577 ***; 1996 U.S. LEXIS 2804 ****; 38 U.S.P.Q.2D (BNA) 1461; 64 U.S.L.W. 4263; 96 Cal. Daily Op. Service 2788; 96 Daily Journal DAR 4642; 9 Fla. L. Weekly Fed. S 540

HERBERT MARKMAN AND POSITEK, INC., PETITIONERS v. WESTVIEW INSTRUMENTS, INC. AND ALTHON ENTERPRISES, INC.

Prior History:  [****1]  ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT.

Disposition: 52 F.3d 967, affirmed.

CORE TERMS

patent, invention, terms, infringement, cases, specification, inventory, construing, juries, expert testimony, term of art, common-law, common law, dry-cleaning, instruments, clothing, analogy, courts

Civil Procedure, Trials, Jury Trials, Province of Court & Jury, Patent Law, Infringement Actions, Claim Interpretation, General Overview, Constitutional Law, Congressional Duties & Powers, Copyright & Patent Clause, Copyright Law, Constitutional Copyright Protections, Specifications, Definiteness, Claims & Specifications, Description Requirement, Standards & Tests, Enablement Requirement, Invention Theory, Invention Date & Priority, Exclusive Rights, Geographic Scope of Patents, Export & Import, Manufacture, Sale & Use, Utility Patents, Product Patents, Manufactures, Compositions of Matter, Claims, Claim Language, Business & Corporate Compliance, Infringing Acts, Offers to Sell & Sales, Use, Bill of Rights, Fundamental Rights, Trial by Jury in Civil Actions, Right to Jury Trial, Defenses, Experimental Use & Testing, Statutory Bars, Experimental Use Exception, Elements