Patent Claim Construction After Markman

Markman patented a method of inventory control for dry cleaners. The system tracked the progress of clothing through the dry cleaning process. Westview also developed an inventory tracking system for dry cleaners, but the Westview system tracked invoices, not clothing. Markman brought suit for infringement. At issue, inter alia , was the scope of the term "inventory" as used in Markman's patent. Markman , 517 U.S. at 374-375.

At trial, Markman presented evidence on the meaning and scope of his patent claims, including inventor testimony and the testimony of an expert witness. Markman , 52 F.3d 967, 973 (Fed. Cir. 1995). The district court judge instructed the jury to determine the meaning of the claims using all relevant evidence. Id . However, after the jury found that the accused system infringed Markman's patent, the district court granted Westview's deferred motion for judgment as a matter of law. Stating that claim construction was a matter of law, the court ruled that the term "inventory" meant articles of clothing, not cash or transaction totals. Id .

Markman appealed. The Federal Circuit sitting en banc agreed that claim construction was a matter of law for the court, and reviewed the district court's construction of the claim language de novo . Id . at 988. The three primary sources to review when construing claim language are the claim itself, the specification, and the prosecution history. Id . at 979. The court may, in its discretion, also use extrinsic evidence, including inventor and expert testimony, dictionaries, and treatises, to aid in claim interpretation. Id . at 980. Based on the specification and the prosecution history, the majority affirmed the district court's decision in favor of Westview. Id . at 989. Markman again appealed.

• At the time of the Framing, the Seventh Amendment's guarantee of trial by jury extended to a patent infringement action, but the historical evidence does not support extending that guarantee to the resolution of claim construction disputes within the infringement case. Markman , 517 U.S. at 384; see also John B. Pegram, Markman and its Implications , 78 Journal of Patent and Trade Office Society 560, 563 (1996) (discussing the application of the historical test developed in Tull v. United States , 481 U.S. 412 (1987)). Nor does subsequent case precedent support allowing the jury to construe the claims of the patent. The Court quoted Justice Curtis (the nineteenth century writer of Winans v. Denmead ) for the proposition that a simple patent case consisted of two elements: the construction of the patent, and the determination of infringement. The first was a question of law for a court, the second a question of fact for a jury. Id ; see also Pegram, supra , at 564.
• Similarly, case precedent does not support the jury's construction of the terms of art within a claim. Id . at 386-388.
• Functional considerations also favor having judges construe the terms of art and claim language in the patent. A judge is well suited by both training and discipline to interpret written instruments, and to interpret technical claim language within the context of the overall structure of a patent. Id . at 388-389.
• Although the judge may need expert testimony to assist in construing claims, assessment of an expert's credibility is likely to be far less important than a sophisticated analysis of that testimony in relation to the overall structure of the patent. Thus, it makes sense to have a judge construe terms of art notwithstanding their evidentiary underpinnings. Id . at 389.
• Allocating claim construction to the court also promotes uniformity of treatment within the judicial system through application of stare decisis . The lack of such uniformity may discourage private invention. Id . at 390.

• If intrinsic evidence alone can resolve ambiguity in a claim term, then it is improper to rely on extrinsic evidence to extend the reach of a claim or contradict claim language. See Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576 (Fed. Cir. 1996) (Michel, J.). The Federal Circuit held:

See also Phonometrics, Inc. v. Northern Telecom, Inc. , 133 F.3d 1459, 1464 (Fed. Cir. 1998) (Michel, J.) ("Proper construction requires an examination of claim language, the written description, and, if introduced, the prosecution history.") In this case the Federal Circuit upheld the lower court's grant of summary judgment of noninfringement based solely on the claim language, specification, and prosecution history. See id . at 1464-67.

See also Trilogy Communications v. Times Fiber , 109 F.3d 739 (Fed. Cir. 1997) (Lourie, J.). The Federal Circuit upheld the district court's claim construction, holding that in construing claims, a court should look to the claim language, the specification, the prosecution history (and extrinsic evidence only if necessary ). See id . at 744. See also Key Pharmaceuticals v. Hercon Laboratories Corp. , 161 F.3d 709 (Fed. Cir. 1998) (Plager, J.). After noting that this "court has made strong cautionary statements on the proper use of extrinsic evidence," the Federal Circuit clarified that "[w]hat is disapproved of is an attempt to use extrinsic evidence to arrive at a claim construction that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent." Id . at 716. The Federal Circuit accordingly upheld a judgment for the patentee based in part upon claim construction derived from extrinsic evidence. See id . at 716-719.

See also Remington Arms Co. v. Modern Muzzleloading, Inc. , 1999 WL 236722 (M.D.N.C. Feb. 8, 1999) (district court disregarded expert testimony after finding that claims were unambiguous).

But see ATD Corp. v. Lydall, Inc. , 159 F.3d 534 (Fed. Cir. 1998) (Newman, J.). The Federal Circuit confirmed the claim construction reached by the district court. The court noted that "[w]hen the specification explains and defines a term used in the claims, without ambiguity or incompleteness there is no need to search further for the meaning of the term," but that "when such definition is challenged it is often appropriate, despite facial clarity and sufficiency of the specification and the prosecution history, to receive evidence of the meaning and usage of terms of art from persons experienced in the field of invention." Id . at 540.

But see Fromson v. Anitec Printing Plates, Inc. , 132 F.3d 1437 (Fed. Cir. 1997) (Newman, J.). The Federal Circuit upheld the district court's claim interpretation after considering not only on the intrinsic evidence, but expert testimony. See id . at 1442-45. The Court stated that "[a]lthough Markman presents a useful general rule [concerning extrinsic evidence], it is adaptable to the needs of the particular case. In this case, the technical experts not only aided the court's understanding of the technology, but they also provided evidence material to the interpretation of the claims." Id . at 1444. Chief Judge Mayer wrote a brief concurrence "to emphasize the incompleteness of this court's Markman dissertation on the use of extrinsic evidence in construing patent claims." Id . at 1447.

But see also Eastman Kodak Co. v. Goodyear Tire and Rubber Co. , 114 F.3d 1547 (Fed Cir. 1997) (Rader, J.). The Federal Circuit upheld the district court's claim interpretation after considering not only on the intrinsic evidence, but expert testimony. Id . at 1552-56. The dissent (Judge Lourie) argued that the intrinsic evidence was unambiguous, and that expert testimony construing the claim was unnecessary and led the majority to an erroneous result. Id . at 1562-63.

The Court went on to say in Pitney Bowes that under Vitronics , "it is entirely appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field. This is especially the case with respect to technical terms, as opposed to non-technical terms in general usage or terms of art in the claim-drafting art." Id .

See Thomson Consumer Elecs., Inc. v. Innovatron, S.A. , 1998 WL 217533 (D.D.C. April 30, 1998). The district court denied plaintiff's motion to exclude extrinsic evidence from a Markman hearing, noting that expert testimony is often a mix of law and fact and that judicial economy favors the development of a full record at one time. Id . at *3. See also Moll v. Northern Telecom Inc. , 37 U.S.P.Q.2d 1839, 1842 (E.D. Pa. 1995) (The patentee moved for summary judgment on the paper record, but the court denied portions of the motion because some claim construction issues could be resolved only after a full Markman hearing with expert testimony), aff'd, 119 F.3d 17 (Fed. Cir. 1997).

• The Federal Circuit has discussed three tests for equivalency under &#sect; 112 &#para; 6 in the context of literal infringement:
• The three-part Graver test (same function, in substantially the same way, to accomplish substantially the same result),
• The Texas Instruments test (would a person skilled in the art know of interchangeability of disclosed and accused structures),
• The Valmont test (equivalent results from an insubstantial change that adds nothing of significance to structure, material, or acts disclosed in the specification). Lawrence B. Goodwin, Computer Patent Trial Issues: Use and Avoidance of &#sect; 112 &#para; 6 , to Make Your Case , 78 Journal of Patent and Trade Office Society, 809, 812-13 (1996) (citing cases).
  

See, e.g., Haney v. Timesavers, Inc. , 900 F. Supp. 1375 (D. Or. 1995). In Haney , the patentee alleged infringement of its patent for an orbital sander. The accused infringer argued that, since claims must be narrowly interpreted if necessary to sustain their validity, Haney's claim must be narrowly construed (in a way which would not cover the accused device). Id . at 1376-77. The judge noted that the issues of prior art raised by Timesavers were relevant to validity , and not the interpretation of the claims. Id . at 1378. Under Markman , claim construction is a matter for the court and extrinsic evidence (including prior art) may not diminish or vary claim language. Id . at 1377. To do so would destroy the certainty that patent statutes provide to the public. Id . The validity of the patent, in light of the court's claim construction, is left for jury determination. Id .

See also Elf Atochem, supra . In this case the court declined to review the prior art during claim construction, in order to avoid interpreting the prior art as a matter of law. The court found this procedure necessary to preserve the accused infringer's right to a jury trial on the issue of anticipation. See id . at 859-60.

Markman Hearing: No Need to Construe with Motion for Preliminary Injunction?

It is not necessary to definitively construe the patent claims when ruling on a motion for a preliminary injunction. See Int'l. Communication Material, Inc. v. Ricoh Co., Ltd. , 108 F.3d 316 (Fed. Cir. 1997). Ricoh moved for a preliminary injunction to restrain ICMI from marketing a toner cartridge that allegedly infringed Ricoh's patents. The district court denied the motion because Ricoh was unlikely to succeed on the merits. Id . at 318. The court noted, however, that open issues, including claim construction, remained unresolved. Id . Ricoh appealed the denial of its motion, asserting that the denial was a result of erroneous claim construction. Id . The Federal Circuit did not find it necessary to definitively construe Ricoh's claim to rule on the appeal, nor was it necessary for the district court to have done so at that stage of the case. Id . at 318-19.

See also Metaullic Sys. Co., L.P. v. Cooper , 100 F.3d 938 (Fed. Cir. 1996). In Metaullic , both parties sought to have the court construe claims on appeal of a denial for a preliminary injunction. In addition to holding the appeal moot because the patent had expired, Judge Mayer declined to construe the claims "prematurely" before a record had adequately developed -- even though the trial court's construction appeared to be in error. Id . at 939.

See also Novo Nordisk v. Becton Dickinson & Co ., 1998 WL 119692 (S.D.N.Y. March 12, 1998). In Novo Nordisk , the district court observed that while it had the discretion to interpret patent claims conclusively at the preliminary injunction stage, it was under no obligation to do so. Id . at *5. In this case, the court declined to give the claims a final construction. Id .

See also Genentech, Inc. v. Novo Nordisk , 935 F. Supp. 260 (S.D.N.Y. 1996). In that case, Genentech had moved for a temporary restraining order and a preliminary injunction. Id . at 264-65. The court granted the injunction. On appeal, the Federal Circuit had vacated the injunction and remanded the action to the district court. See Novo Nordisk v. Genentech, Inc. , 108 F.3d 1361 (Fed. Cir. 1997). The Federal Circuit found that the district court had erroneously construed the claims in determining Genentech's likelihood of success on the merits. See Genentech , 935 F. Supp. at 265. Thus the Federal Circuit provided claim construction very early in the case. See also Bell & Howell , 132 F.3d at 707; Boehringer Ingelheim Animal Health, Inc. v. Schering-Plough Corp. , 1998 WL 271764, at *3 (D.N.J. April 27, 1998) (District court conclusively interpreted claim language at the time of the preliminary injunction hearing).

"The meaning of claim terms is the central issue of patent litigation. With most aspects of trial hinging on this determination -- now strictly a question of law for the court -- a conscientious court will generally endeavor to make this ruling before trial." Loral Fairchild Corp. v. Victor Co. of Japan, Ltd. , 911 F. Supp. 76, 79 (E.D.N.Y. 1996) (Loral II) (Rader, J., sitting by designation). A number of courts have conducted Markman hearings before trial.

• In another case, claim interpretation was put off until just before the trial ended. Gary M. Hoffman and John A. Wasleff, The Court Gives and the Court Takes Away , *3 of 7 (undated article on Internet) ( citing Johns Hopkins University v. Celpro , 894 F. Supp. 819, 826 (D. Del. 1995) (McKelvie, J.)). The Hoffman article also noted the admonition in Lucas Aerospace, that "any jury hiatus should be avoided if at all possible." 890 F. Supp. at 332 n.3. See also Patricia N. Brantley, Patent Law Handbook , &#sect; 4.01 (1996-97 ed.) (Certain district courts have apparently construed claims at a "charge" conference after the close of evidence, although no reported decisions seem to have adopted this approach).
  

• Claim construction is a matter of law to be reviewed de novo. See e.g., CVI/Beta Venture, Inc. v. Tura LP , 112 F.3d 1146 (Fed. Cir. 1997). But see Metaullic Systems Co. , 100 F.3d at 939 (Chief Judge Mayer suggesting that the "mongrel" law/fact nature of claim construction might require deference to a trial court's factual finding as part of claim construction). See also Chief Judge Mayer's concurrences in Serrano v. Telular Corp. , 111 F.3d 1578, 1586 (Fed. Cir. 1997) (same argument) and in Fromson, 132 F.3d at 1448 ("[T]he surest way to maintain consistency and certainty in patent cases is for us to rely on the trial court's fact finding expertise . . . We do a disservice if we go off on a definitional inquest of our own.").
  
• A majority of the Federal Circuit recently countered Judge Mayer's position in Cybor Corp. v. FAS Technologies, Inc. , 138 F.3d 1448 (Fed. Cir. 1998) ( en banc ). The court reaffirmed that claim construction was a purely legal question, reviewed de novo on appeal, and "disavow[ed] any language in [its] previous opinions . . . that holds, purports to hold, states, or suggests anything to the contrary, see, e.g., Fromson . . . ." Id . at 1456.

See also Metaullic Systems Co. , 100 F.3d at 939-40 (Lourie, J., dissenting). Judge Lourie argued that since the Supreme Court did not expressly characterize claim construction as law or fact (nor did it address standards of review), and since the Federal Circuit has determined that claim construction is a matter of law en banc , there is no basis for deferring to a district court.

See also Ethicon Endo-Surgery Inc. v. U.S. Surgical , 93 F.3d 1572 (Fed. Cir. 1996). In Ethicon , a Markman hearing led to a summary judgment of noninfringement on both literal and equivalents theories. Id . at 1583. The Federal Circuit affirmed the judgment with respect to literal infringement but remanded on the question of doctrine-of-equivalents infringement. Infringement under the doctrine of equivalents frequently turns on questions of fact, and the record did not show that there were no triable issues of fact concerning the equivalence of the accused device to the patent claims. Id .

See also Litton Sys., Inc. v. Honeywell, Inc. , 140 F.3d 1449, 1454-55 (Fed. Cir. 1998) (court's claim construction led to overturning of jury verdict of infringement under the doctrine of equivalents); Summer Infant Prods., Inc. v. Playskool Baby Prods., Inc. , 963 F. Supp. 86 (D.R.I. 1997) (same), aff'd , 1998 WL 735947 (Fed. Cir. Oct. 20, 1998) (table).

_________________________________________________________
1/ &#copy1999 George F. Pappas, Washington, D.C.