Jury's role in patent cases reduced.

The Federal Circuit Court of Appeals has recently curtailed jury participation in patent infringement suits. (Markman v. Westview Instruments, Inc., No. 92-1049, 1995 U.S. App. LEXIS 7593 (Fed. Cir. Apr. 5, 1995).) The court held that claim construction - defining the scope of the allegedly infringed patent - is a question of law for courts to decide. Comparing the properly construed claim to the device accused of infringement remains a jury question. Because claim construction is the pivotal decision, however, this holding essentially takes infringement cases away from the jury.

Writing for the eight-judge majority, Chief Judge Glenn Archer said that because patents are fully integrated written instruments, it is appropriate for the court to determine their meaning and scope. In construing claims, the court is defining the legal rights created by the patent. Although the courts can look to extrinsic evidence in claim construction, they do not credit certain evidence over other evidence or make factual findings, the court said.

The court claimed its holding does not violate the right to a jury trial guaranteed by the Seventh Amendment. The focus in construing claims is not the subjective intent of the parties, which would be a question of fact, but how an objective person of ordinary skill would interpret the claim, the court reasoned.

The plaintiff sued over infringement of his patent for a dry cleaners' inventory control system. At the conclusion of trial, which included testimony by the plaintiff and a patent law expert on the scope of the patent, the jury returned a verdict for the plaintiff. But the trial court granted the defendant judgment as a matter of law, finding no infringement according to its own claim construction.

On appeal, the plaintiff argued the court had erroneously substituted its construction for the jury's. The Federal Circuit affirmed the judgment of noninfringement, finding the trial court had discharged its obligation to construe the claim by overturning a jury verdict incompatible with proper construction.

In a formal statement, the plaintiff's counsel claimed the case "denies in patent infringement cases the right to jury trial guaranteed by the United States Constitution." The assumption that judges can better interpret patent terminology should give way to the Seventh Amendment, they said.

William Mallin of Pittsburgh, lead counsel for the plaintiff, said the decision will have a "tremendous impact on patent infringement litigation." Not only does the case severely limit the jury's power, Mallin noted, it also will affect nonjury trials. Because claim construction is now a question of law, a de novo standard of review applies instead of the "clearly erroneous" standard that applies to questions of fact. Thus, Mallin observed, the Federal Circuit has created more work for itself because every patent claim will have to be reconstrued by the court on appeal.

In a lengthy dissent, Judge Pauline Newman said the holding "creates a litigation system that is unique to patent cases, unworkable, and ultimately unjust." Further, she wrote, the majority has denied the right to a jury trial by "calling a question of fact a question of law. The Seventh Amendment is not so readily circumvented."