SUPREME COURT OF THE UNITED STATES
517 U.S. 370; 116 S. Ct. 1384; 38 U.S.P.Q.2D (BNA) 1461
January 8, 1996, Argued
April 23, 1996, Decided
[*372] 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,
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, concise,
and exact 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 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 change," Schwartz, supra, at 82. n1 In
this opinion, the word "claim" is used only in this sense peculiar to patent
law.
n1 Thus, for example, a claim for a ceiling fan with three blades attached to a solid rod connected to a motor would not only cover fans that take precisely this form, but would also cover a similar fan that includes some additional feature, e. g., such a fan with a cord or switch for turning it on and off, and may cover a product deviating from the core design in some noncritical way, e. g., a three-bladed ceiling fan with blades attached to a hollow rod connected to a motor. H. Schwartz, Patent Law and Practice 81-82 (2d ed. 1995).
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.
Petitioner in this infringement suit, Markman, owns United States Reissue
Patent No. 33,054 for his "Inventory Control and Reporting System
for Drycleaning Stores." The patent describes a system that can monitor
and report the status, location, and movement of clothing in a dry-cleaning
establishment. The Markman system consists of a keyboard and data processor
to generate written records for each transaction, including a bar code
readable by optical detectors operated by employees, who log the progress
of clothing through the dry-cleaning process. Respondent Westview's product
also includes a keyboard and processor, and it lists charges for the dry-cleaning
services on bar-coded tickets that can be read by portable optical detectors.
Markman brought an infringement suit against Westview and Althon Enterprises,
an operator of dry-cleaning establishments [*375] using Westview's
products (collectively, Westview). Westview responded that Markman's patent
is not infringed by its system because the latter functions merely to record
an inventory of receivables by tracking invoices and transaction totals,
rather than to record and track an inventory of articles of clothing. Part
of the dispute hinged upon the meaning of the word "inventory," a term
found in Markman's independent claim 1, which states that Markman's product
can "maintain an inventory total" and "detect and localize spurious additions
to inventory." The case was tried before a jury, which heard, among
others, a witness produced by Markman who testified about the meaning of
the claim language.
After the jury compared the patent to Westview's device, it found an
infringement of Markman's independent claim 1 and dependent claim 10. n2
The District Court nevertheless granted Westview's deferred motion for
judgment as a matter of law, one of its reasons being that the term "inventory"
in Markman's patent encompasses "both cash inventory and the actual physical
inventory of articles of clothing." 772 F. Supp. 1535, 1537-1538 (ED Pa.
1991). Under the trial court's construction of the patent, the production,
sale, or use of a tracking system for dry cleaners would not infringe Markman's
patent unless the product was capable of tracking articles of clothing
throughout the cleaning process and generating reports about their status
and location. Since Westview's system cannot do these things, the District
Court directed a verdict on the ground that Westview's device does not
have the "means to maintain an inventory total" and thus cannot "'detect
and localize spurious additions to inventory as well as spurious deletions
therefrom,'" as required by claim 1. Id., at 1537.
n2 Dependent claim 10 specifies that, in the invention of claim 1, the input device is an alpha-numeric keyboard in which single keys may be used to enter the attributes of the items in question.
[*376] Markman appealed, arguing it was error for
the District Court to substitute its construction of the disputed claim
term 'inventory' for the construction the jury had presumably given it.
The United States Court of Appeals for the Federal Circuit affirmed, holding
the interpretation of claim terms to be the exclusive province of the court
and the Seventh Amendment to be consistent with that conclusion.
52 F.3d 967 (1995). Markman sought our review on each point, and we granted
certiorari. 515 U.S. 1192 (1995). We now affirm.
II
The Seventh Amendment provides that "in Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved ...." U.S. Const., Amdt. 7. Since Justice Story's day, United States v. Wonson, 1 Gall. 5, 28 F. Cas. 745, 750 (No. 16,750) (CC Mass. 1812), we have understood that "the right of trial by jury thus preserved is the right which existed under the English common law when the Amendment was adopted." Baltimore & Carolina Line, Inc. v. Redman, 295 U.S. 654, 657, 79 L. Ed. 1636, 55 S. Ct. 890 (1935). In keeping with our longstanding adherence to this "historical test," Wolfram, The Constitutional History of the Seventh Amendment, 57 Minn. L. Rev. 639, 640-643 (1973), we ask, first, whether we are dealing with a cause of action that either was tried at law at the time of the founding or is at least analogous to one that was, see, e. g., Tull v. United States, 481 U.S. 412, 417, 95 L. Ed. 2d 365, 107 S. Ct. 1831 (1987). If the action in question belongs in the law category, we then ask whether the particular trial decision must fall to the jury in order to preserve the substance of the common-law right as it existed in 1791. See infra, at 377-378. n3
n3 Our formulations of the historical test do not deal with the possibility of conflict between actual English common-law practice and American assumptions about what that practice was, or between English and American practices at the relevant time. No such complications arise in this case.
[*377] A
As to the first issue, going to the character of the cause of
action, "the form of our analysis is familiar. 'First we compare the statutory
action to 18th-century actions brought in the courts of England prior to
the merger of the courts of law and equity.'" Granfinanciera, S. A. v.
Nordberg, 492 U.S. 33, 42, 106 L. Ed. 2d 26, 109 S. Ct. 2782 (1989) (citation
omitted). Equally familiar is the descent of today's patent infringement
action from the infringement actions tried at law in the 18th century,
and there is no dispute that infringement cases today must be tried to
a jury, as their predecessors were more than two centuries ago. See, e.
g., Bramah v. Hardcastle, 1 Carp. P. C. 168 (K. B. 1789).
B
This conclusion raises the second question, whether a particular
issue occurring within a jury trial (here the construction of a patent
claim) is itself necessarily a jury issue, the guarantee being essential
to preserve the right to a jury's resolution of the ultimate dispute.
In some instances the answer to this second question may be easy because
of clear historical evidence that the very subsidiary question was so regarded
under the English practice of leaving the issue for a jury. But when, as
here, the old practice provides no clear answer, see infra, at 378-380,
we are forced to make a judgment about the scope of the Seventh Amendment
guarantee without the benefit of any foolproof test.
The Court has repeatedly said that the answer to the second question
"must depend on whether the jury must shoulder this responsibility as necessary
to preserve the 'substance of the common-law right of trial by jury.'"
Tull v. United States, supra, at 426 (emphasis added) (quoting Colgrove
v. Battin, 413 U.S. 149, 157, 37 L. Ed. 2d 522, 93 S. Ct. 2448 (1973));
see also Baltimore & Carolina Line, supra, at 657. "'"Only those incidents
which are regarded as fundamental, as inherent in and of the essence of
the system of trial by jury, are placed beyond [*378] the reach
of the legislature."'" Tull v. United States, supra, at 426 (citations
omitted); see also Galloway v. United States, 319 U.S. 372, 392, 87 L.
Ed. 1458, 63 S. Ct. 1077 (1943).
The "substance of the common-law right" is, however, a pretty blunt
instrument for drawing distinctions. We have tried to sharpen it, to be
sure, by reference to the distinction between substance and procedure.
See Baltimore & Carolina Line, supra, at 657; see also Galloway v.
United States, supra, at 390-391; Ex parte Peterson, 253 U.S. 300, 309,
64 L. Ed. 919, 40 S. Ct. 543 (1920); Walker v. New Mexico & Southern
Pacific R. Co., 165 U.S. 593, 596, 41 L. Ed. 837, 17 S. Ct. 421 (1897);
but see Sun Oil Co. v. Wortman, 486 U.S. 717, 727, 100 L. Ed. 2d 743, 108
S. Ct. 2117 (1988). We have also spoken of the line as one between issues
of fact and law. See Baltimore & Carolina Line, supra, at 657; see
also Ex parte Peterson, supra, at 310; Walker v. New Mexico & Southern
Pacific R. Co., supra, at 597; but see Pullman-Standard v. Swint, 456 U.S.
273, 288, 72 L. Ed. 2d 66, 102 S. Ct. 1781 (1982).
But the sounder course, when available, is to classify a mongrel practice
(like construing a term of art following receipt of evidence) by using
the historical method, much as we do in characterizing the suits and actions
within which they arise. Where there is no exact antecedent, the best hope
lies in comparing the modern practice to earlier ones whose allocation
to court or jury we do know, cf. Baltimore & Carolina Line, supra,
at 659, 660; Dimick v. Schiedt, 293 U.S. 474, 477, 482, 79 L. Ed. 603,
55 S. Ct. 296 (1935), seeking the best analogy we can draw between an old
and the new, see Tull v. United States, supra, at 420-421 (we must search
the English common law for "appropriate analogies" rather than a "precisely
analogous common-law cause of action").
C
"Prior to 1790 nothing in the nature of a claim had appeared either
in British patent practice or in that of the [*379] American
states," Lutz, Evolution of the Claims of U.S. Patents, 20 J. Pat. Off.
Soc. 134 (1938), and we have accordingly found no direct antecedent of
modern claim construction in the historical sources. Claim practice did
not achieve statutory recognition until the passage of the Act of 1836,
Act of July 4, 1836, ch. 357, § 6, 5 Stat. 119, and inclusion
of a claim did not become a statutory requirement until 1870, Act of July
8, 1870, ch. 230, § 26, 16 Stat. 201; see 1 A. Deller, Patent
Claims § 4, p. 9 (2d ed. 1971). Although, as one historian has
observed, as early as 1850 "judges were ... beginning to express more frequently
the idea that in seeking to ascertain the invention 'claimed' in a patent
the inquiry should be limited to interpreting the summary, or 'claim,'"
Lutz, supra, at 145, "the idea that the claim is just as important if not
more important than the description and drawings did not develop until
the Act of 1870 or thereabouts." Deller, supra, § 4, at 9.
At the time relevant for Seventh Amendment analogies, in contrast,
it was the specification, itself a relatively new development, H. Dutton,
The Patent System and Inventive Activity During the Industrial Revolution,
1750-1852, pp. 75-76 (1984), that represented the key to the patent. Thus,
patent litigation in that early period was typified by so-called novelty
actions, testing whether "any essential part of [the patent had been] disclosed
to the public before," Huddart v. Grimshaw, Dav. Pat. Cas. 265, 298 (K.
B. 1803), and "enablement" cases, in which juries were asked to determine
whether the specification described the invention well enough to allow
members of the appropriate trade to reproduce it, see, e. g., Arkwright
v. Nightingale, Dav. Pat. Cas. 37, 60 (C. P. 1785).
The closest 18th-century analogue of modern claim construction seems, then, to have been the construction of specifications, and as to that function the mere smattering [*380] of patent cases that we have from this period n4 shows no established jury practice sufficient to support an argument by analogy that today's construction of a claim should be a guaranteed jury issue. Few of the case reports even touch upon the proper interpretation of disputed terms in the specifications at issue, see, e. g., Bramah v. Hardcastle, 1 Carp. P. C. 168 (K. B. 1789); King v. Else, 1 Carp. P. C. 103, Dav. Pat. Cas., 144 (K. B. 1785); Dollond's Case, 1 Carp. P. C. 28 (C. P. 1758); Administrators of Calthorp v. Waymans, 3 Keb. 710, 84 Eng. Rep. 966 (K. B. 1676), and none demonstrates that the definition of such a term was determined by the jury. n5 This absence of an established practice should not surprise us, given the primitive state of jury patent practice at the end of the 18th century, when juries were still new to the field. Although by 1791 more than a century had passed since the enactment of the Statute of Monopolies, which provided [*381] that the validity of any monopoly should be determined in accordance with the common law, patent litigation had remained within the jurisdiction of the Privy Council until 1752 and hence without the option of a jury trial. E. Walterscheid, Early Evolution of the United States Patent Law: Antecedents (Part 3), 77 J. Pat. & Tm. Off. Soc. 771, 771-776 (1995). Indeed, the state of patent law in the common-law courts before 1800 led one historian to observe that "the reported cases are destitute of any decision of importance .... At the end of the eighteenth century, therefore, the Common Law Judges were left to pick up the threads of the principles of law without the aid of recent and reliable precedents." Hulme, On the Consideration of the Patent Grant, Past and Present, 13 L. Q. Rev. 313, 318 (1897). Earlier writers expressed similar discouragement at patent law's amorphous character, n6 and, as late as the 1830's, English commentators were irked by enduring confusion in the field. See Dutton, supra, at 69-70.
n4 Before the turn of the century, "no more than twenty-two [reported]
cases came before the superior courts of London." H. Dutton, The Patent
System and Inventive Activity During the Industrial Revolution, 1750-1852,
p. 71 (1984).
n5 Markman relies heavily upon Justice Buller's notes of Lord Mansfield's
instructions in Liardet v. Johnson (K. B. 1778), in 1 J. Oldham, The Mansfield
Manuscripts and the Growth of English Law in the Eighteenth Century 748
(1992). Liardet was an enablement case about the invention of stucco, in
which a defendant asserted that the patent was invalid because it did not
fully describe the appropriate method for producing the substance. Even
setting aside concerns about the accuracy of the summary of the jury instructions
provided for this case from outside the established reports, see 1 Oldham,
supra, at 752, n. 11, it does not show that juries construed disputed terms
in a patent. From its ambiguous references, e. g., 1 Oldham, supra, at
756 ("[Lord Mansfield] left to the jury 1st, on all objections made to
exactness, certainty and propriety of the Specification, & whether
any workman could make it by [the Specification]"), we cannot infer the
existence of an established practice, cf. Galloway v. United States,
319 U.S. 372, 392, 87 L. Ed. 1458, 63 S. Ct. 1077 (1943) (expressing concern
regarding the "uncertainty and the variety of conclusions which follows
from an effort at purely historical accuracy"), especially when, as here,
the inference is undermined by evidence that judges, rather than jurors,
ordinarily construed written documents at the time. See infra, at 381-383.
n6 See, e. g., Boulton and Watt v. Bull, 2 H. Bl. 463, 491, 126 Eng.
Rep. 651, 665 (C. P. 1795) (Eyre, C. J.) ("Patent rights are no where that
I can find accurately discussed in our books"); Dutton, supra n. 4, at
70-71 (quoting Abraham Weston as saying "it may with truth be said that
the [Law] Books are silent on the subject [of patents] and furnish no clue
to go by, in agitating the Question What is the Law of Patents?").
Markman seeks to supply what the early case reports lack in so many words by relying on decisions like Turner v. Winter, 1 T. R. 602, 99 Eng. Rep. 1274 (K. B. 1787), and Arkwright v. Nightingale, Dav. Pat. Cas. 37 (C. P. 1785), to argue that the 18th-century juries must have acted as definers of patent terms just to reach the verdicts we know they rendered in patent cases turning on enablement or novelty. But the conclusion simply does not follow. There is no more reason to infer that juries supplied plenary interpretation of written instruments in patent litigation than in other cases implicating the meaning of documentary terms, and we do know that in other kinds of cases during this period judges, [*382] not juries, ordinarily construed written documents. n7 The probability that the judges were doing the same thing in the patent litigation of the time is confirmed by the fact that as soon as the English reports did begin to describe the construction of patent documents, they show the judges construing the terms of the specifications. See Bovill v. Moore, Dav. Pat. Cas. 361, 399, 404 (C. P. 1816) (judge submits question of novelty to the jury only after explaining some of the language and "stating in what terms the specification runs"); cf. Russell v. Cowley & Dixon, Webs. Pat. Cas. 457, 467-470 (Exch. 1834) (construing the terms of the specification in reviewing a verdict); Haworth v. Hardcastle, Webs. Pat. Cas. 480, 484-485 (1834) (same). This evidence is in fact buttressed by cases from this Court; when they first reveal actual practice, the practice revealed is of the judge construing the patent. See, e. g., Winans v. New York & Erie R. Co., 62 U.S. 88, 21 HOW 88, 100, 16 L. Ed. 68 (1859); Winans v. Denmead, 56 U.S. 330, 15 HOW 330, 338, 14 L. Ed. 717 (1854); Hogg v. Emerson, 47 U.S. 437, 6 HOW 437, 484, 12 L. Ed. 505 (1848); cf. Parker v. Hulme, 1 Fish. Pat. Cas. 44, 18 F. Cas. 1138 (No. 10,740) (CC ED Pa. 1849). These indications of our patent practice are the more impressive for being all of a piece with what we know about the analogous contemporary practice of interpreting [*383] terms within a land patent, where it fell to the judge, not the jury, to construe the words. n8
n7 See, e. g., Devlin, Jury Trial of Complex Cases: English Practice
at the Time of the Seventh Amendment, 80 Colum L. Rev. 43, 75 (1980); Weiner,
The Civil Jury Trial and the Law-Fact Distinction, 54 Calif. L. Rev. 1867,
1932 (1966). For example, one historian observed that it was generally
the practice of judges in the late 18th century "to keep the construction
of writings out of the jury's hands and reserve it for themselves," a "safeguard"
designed to prevent a jury from "construing or refining it at pleasure."
9 J. Wigmore, Evidence § 2461, p. 194 (J. Chadbourn rev. ed.
1981) (emphasis in original; internal quotation marks omitted). The absence
of any established practice supporting Markman's view is also shown by
the disagreement between Justices Willis and Buller, reported in Macbeath
v. Haldimand, 1 T. R. 173, 180-182, 99 Eng. Rep. 1036, 1040-1041 (K. B.
1786), as to whether juries could ever construe written documents when
their meaning was disputed.
n8 As we noted in Brown v. Huger, 62 U.S. 305, 21 HOW 305, 318, 16
L. Ed. 125 (1859):
"With regard to the second part of this objection, that which claims
for the jury the construction of the patent, we remark that the patent
itself must be taken as evidence of its meaning; that, like other written
instruments, it must be interpreted as a whole ... and the legal deductions
drawn therefrom must be conformable with the scope and purpose of the entire
document. This construction and these deductions we hold to be within the
exclusive province of the court."
D
Losing, then, on the contention that juries generally had interpretive
responsibilities during the 18th century, Markman seeks a different anchor
for analogy in the more modest contention that even if judges were charged
with construing most terms in the patent, the art of defining terms of
art employed in a specification fell within the province of the jury. Again,
however, Markman has no authority from the period in question, but relies
instead on the later case of Neilson v. Harford, Webs. Pat. Cas. 328 (Exch.
1841). There, an exchange between the judge and the lawyers indicated that
although the construction of a patent was ordinarily for the court, id.,
at 349 (Alderson, B.), judges should "leav[e] the question of words of
art to the jury," id., at 350 (Alderson, B.); see also id., at 370 (judgment
of the court); Hill v. Evans, 4 De. G. F. & J. 288, 293-294, 45 Eng.
Rep. 1195, 1197 (Ch. 1862). Without, however, in any way disparaging the
weight to which Baron Alderson's view is entitled, the most we can say
is that an English report more than 70 years after the time that concerns
us indicates an exception to what probably had been occurring earlier.
n9 In place of [*384] Markman's inference that this exceptional practice
existed in 1791 there is at best only a possibility that it did, and for
anything more than a possibility we have found no scholarly authority.
n9 In explaining that judges generally construed all terms in a written
document at the end of the 18th century, one historian observed that "interpretation
by local usage for example (today the plainest case of legitimate deviation
from the normal standard) was still but making its way." 9 Wigmore, Evidence
§ 2461, at 195; see also id., at 195, and n. 6 (providing examples
of this practice). We need not in any event consider here whether our conclusion
that the Seventh Amendment does not require terms of art in patent claims
to be submitted to the jury supports a similar result in other types of
cases.
III
Since evidence of common-law practice at the time of the framing does not entail application of the Seventh Amendment's jury guarantee to the construction of the claim document, we must look elsewhere to characterize this determination of meaning in order to allocate it as between court or jury. We accordingly consult existing precedent n10 and consider both the relative interpretive skills of judges and juries and the statutory policies that ought to be furthered by the allocation.
n10 Because we conclude that our precedent supports classifying the
question as one for the court, we need not decide either the extent to
which the Seventh Amendment can be said to have crystallized a law/fact
distinction, cf. Ex parte Peterson, 253 U.S. 300, 310, 64 L. Ed.
919, 40 S. Ct. 543 (1920); Walker v. New Mexico & Southern Pacific
R. Co., 165 U.S. 593, 597, 41 L. Ed. 837, 17 S. Ct. 421 (1897), or whether
post-1791 precedent classifying an issue as one of fact would trigger the
protections of the Seventh Amendment if (unlike this case) there were no
more specific reason for decision.
A
The two elements of a simple patent case, construing the patent and determining whether infringement occurred, were characterized by the former patent practitioner, Justice Curtis. n11 "The first is a question of law, to be determined by the court, construing the letters-patent, and the description of the invention and specification of claim annexed to them. The second is a question of fact, to be submitted to a jury." Winans v. Denmead, supra, at 338; see Winans v. [*385] New York & Erie R. Co., supra, at 100; Hogg v. Emerson, supra, at 484; cf. Parker v. Hulme, supra, at 1140.
n11 See 1 A Memoir of Benjamin Robbins Curtis, L L. D., 84 (B. Curtis ed. 1879); cf. O'Reilly v. Morse, 56 U.S. 62, 15 HOW 62, 63, 14 L. Ed. 601 (1854) (noting his involvement in a patent case).
In arguing for a different allocation of responsibility for the first
question, Markman relies primarily on two cases, Bischoff v. Wethered,
76 U.S. 812, 9 Wall. 812, 19 L. Ed. 829 (1870), and Tucker v. Spalding,
80 U.S. 453, 13 Wall. 453, 20 L. Ed. 515 (1872). These are said to show
that evidence of the meaning of patent terms was offered to 19th-century
juries, and thus to imply that the meaning of a documentary term was a
jury issue whenever it was subject to evidentiary proof. That is not what
Markman's cases show, however.
In order to resolve the Bischoff suit implicating the construction
of rival patents, we considered "whether the court below was bound to compare
the two specifications, and to instruct the jury, as a matter of law, whether
the inventions therein described were, or were not, identical." 9 Wall.
at 813 (statement of the case). We said it was not bound to do that, on
the ground that investing the court with so dispositive a role would improperly
eliminate the jury's function in answering the ultimate question of infringement.
On that ultimate issue, expert testimony had been admitted on "the nature
of the various mechanisms or manufactures described in the different patents
produced, and as to the identity or diversity between them." Id., at 814.
Although the jury's consideration of that expert testimony in resolving
the question of infringement was said to impinge upon the well-established
principle "that it is the province of the court, and not the jury, to construe
the meaning of documentary evidence," id., at 815, we decided that it was
not so. We said:
"The specifications ... profess to describe mechanisms and complicated
machinery, chemical compositions and other manufactured products, which
have their existence in pais, outside of the documents themselves; and
which are commonly described by terms of the art or mystery to which they
respectively belong; and these [*386] descriptions and terms
of art often require peculiar knowledge and education to understand them
aright .... Indeed, the whole subject-matter of a patent is an embodied
conception outside of the patent itself .... This outward embodiment of
the terms contained in the patent is the thing invented, and is to be properly
sought, like the explanation of all latent ambiguities arising from the
description of external things, by evidence in pais." Ibid.
Bischoff does not then, as Markman contends, hold that the use of expert
testimony about the meaning of terms of art requires the judge to submit
the question of their construction to the jury. It is instead a case in
which the Court drew a line between issues of document interpretation and
product identification, and held that expert testimony was properly presented
to the jury on the latter, ultimate issue, whether the physical objects
produced by the patent were identical. The Court did not see the decision
as bearing upon the appropriate treatment of disputed terms. As the opinion
emphasized, the Court's "view of the case is not intended to, and does
not, trench upon the doctrine that the construction of written instruments
is the province of the court alone. It is not the construction of the instrument,
but the character of the thing invented, which is sought in questions of
identity and diversity of inventions." Id., at 816 (emphasis added). Tucker,
the second case proffered by Markman, is to the same effect. Its reasoning
rested expressly on Bischoff, and it just as clearly noted that in addressing
the ultimate issue of mixed fact and law, it was for the court to "lay
down to the jury the law which should govern them." Tucker, supra, at 455.
n12
n12 We are also unpersuaded by petitioner's heavy reliance upon the decision of Justice Story on circuit in Washburn v. Gould, 29 F. Cas. 312 (No. 17,214) (CC Mass. 1844). Although he wrote that "the jury are to judge of the meaning of words of art, and technical phrases," id., at 325, he did so in describing the decision in Neilson v. Harford, Webs. Pat. Cas. 328 (Exch. 1841), which we discuss, supra, at 383, and, whether or not he agreed with Neilson, he stated, "but I do not proceed upon this ground." 29 F. Cas. at 325.
[*387] If the line drawn in these two opinions is a fine
one, it is one that the Court has drawn repeatedly in explaining the respective
roles of the jury and judge in patent cases, n13 and one understood by
commentators writing in the aftermath of the cases Markman cites. Walker,
for example, read Bischoff as holding that the question of novelty is not
decided by a construction of the prior patent, "but depends rather upon
the outward embodiment of the terms contained in the [prior patent]; and
that such outward embodiment is to be properly sought, like the explanation
of latent ambiguities arising from the description of external things,
by evidence in pais." A. Walker, Patent Laws § 75, p. 68 (3d
ed. 1895). He also emphasized in the same treatise that matters of claim
construction, even those aided by expert testimony, are questions for the
court:
"Questions of construction are questions of law for the judge, not
questions of fact for the jury. As it cannot be expected, however, that
judges will always possess the requisite knowledge of the meaning of the
terms of art or science used in letters patent, it often becomes necessary
that they should avail themselves of the light furnished by experts relevant
to the significance of such words and phrases. The judges are not, however,
obliged to blindly follow such testimony." Id., § 189, at 173
(footnotes omitted).
Virtually the same description of the court's use of evidence in its
interpretive role was set out in another contemporary treatise:
[*388] "The duty of interpreting letters-patent has been
committed to the courts. A patent is a legal instrument, to be construed,
like other legal instruments, according to its tenor. ... Where technical
terms are used, or where the qualities of substances or operations mentioned
or any similar data necessary to the comprehension of the language of the
patent are unknown to the judge, the testimony of witnesses may be received
upon these subjects, and any other means of information be employed. But
in the actual interpretation of the patent the court proceeds upon
its own responsibility, as an arbiter of the law, giving to the patent
its true and final character and force." 2 W. Robinson, Law of Patents
§ 732, pp. 481-483 (1890) (emphasis added; footnotes omitted).
In sum, neither Bischoff nor Tucker indicates that juries resolved the meaning of terms of art in construing a patent, and neither case undercuts Justice Curtis's authority.
n13 See, e. g., Coupe v. Royer, 155 U.S. 565, 579-580, 39 L. Ed. 263, 15 S. Ct. 199 (1895); Silsby v. Foote, 55 U.S. 218, 14 HOW 218, 226, 14 L. Ed. 394 (1853); Hogg v. Emerson, 47 U.S. 437, 6 HOW 437, 484, 12 L. Ed. 505 (1848); cf. Brown v. Piper, 91 U.S. 37, 41, 23 L. Ed. 200 (1875); Winans v. New York & Erie R. Co., 62 U.S. 88, 21 HOW 88, 100, 16 L. Ed. 68 (1859); cf. also U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668, 678, 86 L. Ed. 1105, 62 S. Ct. 839 (1942).
B
Where history and precedent provide no clear answers, functional
considerations also play their part in the choice between judge and jury
to define terms of art. We said in Miller v. Fenton, 474 U.S. 104, 114,
88 L. Ed. 2d 405, 106 S. Ct. 445 (1985), that when an issue "falls somewhere
between a pristine legal standard and a simple historical fact, the fact/law
distinction at times has turned on a determination that, as a matter of
the sound administration of justice, one judicial actor is better positioned
than another to decide the issue in question." So it turns out here, for
judges, not juries, are the better suited to find the acquired meaning
of patent terms.
The construction of written instruments is one of those things that
judges often do and are likely to do better than jurors unburdened by training
in exegesis. Patent construction in particular "is a special occupation,
requiring, like all others, special training and practice. The judge, from
his training and discipline, is more likely to give a proper [*389]
interpretation to such instruments than a jury; and he is, therefore, more
likely to be right, in performing such a duty, than a jury can be expected
to be." Parker v. Hulme, 18 F. Cas. at 1140. Such was the understanding
nearly a century and a half ago, and there is no reason to weigh the respective
strengths of judge and jury differently in relation to the modern claim;
quite the contrary, for "the claims of patents have become highly technical
in many respects as the result of special doctrines relating to the proper
form and scope of claims that have been developed by the courts and the
Patent Office." Woodward, Definiteness and Particularity in Patent Claims,
46 Mich. L. Rev. 755, 765 (1948).
Markman would trump these considerations with his argument that a jury
should decide a question of meaning peculiar to a trade or profession simply
because the question is a subject of testimony requiring credibility determinations,
which are the jury's forte. It is, of course, true that credibility judgments
have to be made about the experts who testify in patent cases, and in theory
there could be a case in which a simple credibility judgment would suffice
to choose between experts whose testimony was equally consistent with a
patent's internal logic. But our own experience with document construction
leaves us doubtful that trial courts will run into many cases like that.
In the main, we expect, any credibility determinations will be subsumed
within the necessarily sophisticated analysis of the whole document, required
by the standard construction rule that a term can be defined only in a
way that comports with the instrument as a whole. See Bates v. Coe, 98
U.S. 31, 38, 25 L. Ed. 68 (1878); 6 Lipscomb § 21:40, at 393;
2 Robinson, supra, § 734, at 484; Woodward, supra, at 765; cf.
U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Co.,
315 U.S. 668, 678, 86 L. Ed. 1105, 62 S. Ct. 839 (1942); cf. 6 Lipscomb
§ 21:40, at 393. Thus, in these cases a jury's capabilities
to evaluate demeanor, cf. Miller, supra, at 114, 117, to sense the
"mainsprings of human conduct," Commissioner v. Duberstein, 363 U.S. 278,
289, 4 L. Ed. 2d 1218, 80 S. Ct. 1190 (1960), or to reflect community
[*390] standards, United States v. McConney, 728 F.2d 1195, 1204
(CA9 1984) (en banc), are much less significant than a trained ability
to evaluate the testimony in relation to the overall structure of the patent.
The decisionmaker vested with the task of construing the patent is in the
better position to ascertain whether an expert's proposed definition fully
comports with the specification and claims and so will preserve the patent's
internal coherence. We accordingly think there is sufficient reason to
treat construction of terms of art like many other responsibilities that
we cede to a judge in the normal course of trial, notwithstanding its evidentiary
underpinnings.
C
Finally, we see the importance of uniformity in the treatment
of a given patent as an independent reason to allocate all issues of construction
to the court. As we noted in General Elec. Co. v. Wabash Appliance Corp.,
304 U.S. 364, 369, 82 L. Ed. 1402, 58 S. Ct. 899 (1938), "the limits of
a patent must be known for the protection of the patentee, the encouragement
of the inventive genius of others and the assurance that the subject of
the patent will be dedicated ultimately to the public." Otherwise, a "zone
of uncertainty which enterprise and experimentation may enter only at the
risk of infringement claims would discourage invention only a little less
than unequivocal foreclosure of the field," United Carbon Co. v. Binney
& Smith Co., 317 U.S. 228, 236, 87 L. Ed. 232, 63 S. Ct. 165 (1942),
and "the public [would] be deprived of rights supposed to belong to it,
without being clearly told what it is that limits these rights." Merrill
v. Yeomans, 94 U.S. 568, 573, 24 L. Ed. 235 (1877). It was just for the
sake of such desirable uniformity that Congress created the Court of Appeals
for the Federal Circuit as an exclusive appellate court for patent cases,
H. R. Rep. No. 97-312, pp. 20-23 (1981), observing that increased uniformity
would "strengthen the United States patent system in such a way as to foster
technological growth and industrial innovation." Id., at 20.
[*391] Uniformity would, however, be ill served by submitting
issues of document construction to juries. Making them jury issues would
not, to be sure, necessarily leave evidentiary questions of meaning wide
open in every new court in which a patent might be litigated, for principles
of issue preclusion would ordinarily foster uniformity. Cf. Blonder-Tongue
Laboratories, Inc. v. University of Ill. Foundation, 402 U.S. 313,
28 L. Ed. 2d 788, 91 S. Ct. 1434 (1971). But whereas issue preclusion could
not be asserted against new and independent infringement defendants even
within a given jurisdiction, treating interpretive issues as purely legal
will promote (though it will not guarantee) intrajurisdictional certainty
through the application of stare decisis on those questions not yet subject
to interjurisdictional uniformity under the authority of the single appeals
court.
***
Accordingly, we hold that the interpretation of the word "inventory"
in this case is an issue for the judge, not the jury, and affirm the decision
of the Court of Appeals for the Federal Circuit.
It is so ordered.