Markman v. Westview Instruments, Inc.

Herbert Markman patented a system to track clothes through the dry cleaning process using barcode to generate receipts and track inventory.

The 7th Amendment guarantees the right to a jury trial in patent infringement cases. The 7th Amendment preserves the right to a jury trial as it existed in 1791. There is no dispute that infringement cases today must be tried by a jury as their predecessors were in 1791. However, the court held that the construction of the patent, including the terms of art within its claim, is exclusively within the court's province.

In general, the effectiveness of a particular patent depends on its potential to block competitors. The key for a patent holder is getting the proper definition of words used in the patent to allow blocking of the particular troublesome competitive product. Before this decision, juries were responsible for deciding the meaning of the words used in patent claims. Opposing results in cases with similar facts were common, and a perception arose that the outcome of such trials was somewhat arbitrary. In Markman, the Court held that judges, not juries, would evaluate and decide the meaning of the words used in patent claims. Judges were to look at four sources for definitions, in order of priority:

1. the written description accompanying the patent claims is most relevant;
2. the documentation of the history of the patent as it went through the application;
3. standard dictionaries of English;
4. finally, if all else fails, expert testimony from experts "skilled in the art" at issue.

This case has had a significant impact on the patent litigation process in the United States. Many jurisdictions now hold Markman hearings to construe patent claims before the actual trial. Patent infringement suits now often settle after this stage of the litigation process.

In a unanimous ruling written by Justice David Souter, the court affirmed the judgment of the circuit court, holding that:

The construction of a patent, including terms of art within its claim, is exclusively within the province of the court.

Markman was represented in the original trial by the law firm of Duane Morris,[2] and by the law firm of Eckert Seamans on appeal. Defendants were represented by the law firm of Gollatz, Griffin, Ewing & McCarthy (now Flaster Greenberg) on appeal.[3]

• List of United States Supreme Court cases, volume 517
• Markman hearing

• Text of Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) is available from: CourtListener  Findlaw  Google Scholar  Justia  Library of Congress  Oyez (oral argument audio)