Patent Claim Construction After Markman

Markman v. Westview Instruments Inc., 517 U.S. 370 (1996)

Case Summary

Post-Markman Developments

Case Summary
Facts

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.
Procedural History

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.
Supreme Court Opinion

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.

Post-Markman Developments

Priority of Evidence

The Supreme Court decision placed no limits on the evidence a court may consider in construing claim language, and indeed seemed to assume that in some cases the trial court would consider inventor and/or expert testimony. See Markman, 517 U.S. at 389. The Federal Circuit, however, has stated that certain categories of "intrinsic" evidence are primary, and entitled to great weight. The decisions of the Federal Circuit since Markman reveal a certain tension concerning the value of extrinsic evidence, and the weight to which it is entitled.

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:

When interpreting a claim, look first to intrinsic evidence (the patent itself, including the claims, the specification, and if in evidence, the prosecution history). Id. at 1582. The claim defines the scope of the invention. Although terms in the claim are normally given their customary meaning, a patentee may be his own lexicographer if the special definition of the term is clearly stated in the specification or prosecution history. Id. Thus, the court must always review the specification, which may act as a "dictionary" either expressly or by implication. The language of the specification is usually dispositive. Id. Lastly, the prosecution history is often of critical significance. Id. at 1582-83.
If analysis of intrinsic evidence alone resolves ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence to vary or contradict claim language. Id. at 1583. Competitors have a right to look at the public record and attempt to "design around" a claimed invention. Id. That right would be worthless if expert testimony can alter that record. Expert testimony can only be used to aid the court in understanding the claim; it cannot be used to contradict the claim language, the specification, or the prosecution history. Id. at 1584-85.
Applying these rules to the facts of the case, the Federal Circuit reversed and remanded.

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.

Cf. Endress + Hauser, Inc. v. Hawk Measurement Systems Pty., Ltd., 122 F.3d 1040 (Fed. Cir. 1997) (Plager, J.). The Federal Circuit upheld the district court's interpretation of a means plus function claim, and rebuffed the appellant's challenge to the court's reliance on extrinsic evidence. Id. at 1042-43. "[A]s we made abundantly clear in Markman, the trial court has wide latitude in the kinds of aids, including testimony of witnesses, employed to assist in the job of claim interpretation as a matter of law." Id. at 1042.
In Pitney Bowes Inc. v. Hewlett-Packard Co., ___ F.3d ___, 51 U.S.P.Q. 2d 1161 (Fed. Cir. 1999), the Court said that "Vitronics does not prohibit courts from examining extrinsic evidence, even when the patent document is itself clear." Id. at 1167 (Emphasis added). Moreover, Vitronics "does not set forth any rules regarding the admissibility of expert testimony into evidence and there are no prohibitions in Vitronics on courts hearing evidence from experts." Id. at 1168 (Emphasis added). Instead, Vitronics "merely warned the courts not to rely on extrinsic evidence to contradict the meaning of claims discernible from thoughtful examination of the claims, the written description, and the prosecution history--the intrinsic evidence." Id.

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.

Judge Rader wrote "Additional Views" in Pitney Bowes in which Judge Plager joined and noted that whereas Vitronics offers "good counsel" in urging trial judges to focus on the patent document, the Federal Circuit "should refrain from dictating a claim interpretation process that excludes reliable expert testimony." Id. at 1173 Judge Rader went on to give the following three examples of situations where the trial court may benefit from expert testimony: "(1) supply [the trial court with] a proper technological context to understand the claims (words often have meaning only in context), (2) explain the meaning of claim terms as understood by one of skill in the art (the ultimate standard for claim meaning), and (3) help the trial court understand the patent process itself (complex prosecution histories--not to mention specifications--are not familiar to most trial courts)." Id.
The language of Markman (Fed. Cir.) and its progeny make it clear that a litigant has no right to submit any extrinsic evidence, including expert testimony, concerning the claim terms. Gary M. Hoffman and John A. Wasleff, The Court Gives and the Court Takes Away, *4 of 7 (undated article on Internet) (quoting Markman, 52 F.3d at 580) ("The court may in its discretion, receive extrinsic evidence . . ."). The Supreme Court decision in Markman did not precisely address this point, although the Court presumed the need for expert testimony in at least some cases. See Markman, 517 U.S. at 389 (in the context of discussing allocation of judge/jury responsibilities).

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).

But see Tridelta Indus. v. Frymaster Corp., 1998 WL 292271, at *2 (N.D. Ohio June 2, 1998) (District court relied on actual language of claims, specification and prosecution history, not on electrical engineering professor's testimony given during Markman hearing, because "[t]he Court looks to extrinsic evidence to assist in construing a patent claim only if the intrinsic evidence is ambiguous.").
Markman specifically noted that extrinsic evidence could be used to "demonstrate the state of the prior art at the time of the invention." Markman, 52 F.3d at 980. However, the implications of the decision may lead courts to decline to use prior art to construe the claims under certain circumstances, contrary to pre-Markman precedent. See Elf Atochem v. Libbey-Owens-Ford Co., 894 F. Supp. 844, 859-60 (D. Del. 1995) (refusing to look to prior art in construing a claim, to preserve Atochem's right to a jury trial on the issue of anticipation).
"Although limitations may not be read into claims from specifications, claims are to be read in view of the specification of which they are a part. The specification that is relevant to claim construction is the specification of the patent in which the claims reside." Young Dental Mfg. Co., Inc. v. Q3 Special Prods., 112 F.3d 1137, 1143 (Fed. Cir. 1997).

Interpretation of Means Plus Function Claims

The Federal Circuit in Markman reserved the question of whether the construction of means-plus-function claims, which fall under 35 U.S.C. &#sect; 112 &#para; 6, is a question of law or fact. Markman, 52 F.3d at 977 n.8. Specifically, the court expressed "no opinion on the issue of whether a determination of equivalents under &#sect; 112, &#para; 6 is a question of law or fact." Id. The Supreme Court also did not address this issue. In U.S. Surgical v. Ethicon, Inc., 103 F.3d 1554, 1566-70 (Fed. Cir. 1997), U.S. Surgical argued that jury instructions which failed to construe the claim language of a means-plus-function claim led to an incorrect jury verdict. Id. at 1566. The Federal Circuit found no error, stating that the suggested jury instructions were mere repetition; the meanings of terms in the claim were not in dispute. Id. at 1567. The court's analysis failed to distinguish means-plus-function claim interpretation from the general Markman rule. Id. at 1568-70.
This implicit decision to treat means-plus-function claims according to the general rule seems to be confirmed by the decision in Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 1998 WL 239335 (Fed. Cir. May 14, 1998). The Federal Circuit identified three components of means-plus-function claim analysis: (1) determination of the claimed function, (2) identification of the "means" term and its corresponding structure, and (3) evaluation of the equivalency of the accused device. Id. at *4-5. According to the court, the first two elements are matters of claim construction and thus questions of law, reviewed de novo on appeal. Id. at *4. However, the court expressly left open the question unresolved by Markman, whether a determination of equivalency is a question of law or fact. Id. at *6 (citing Markman, 52 F.3d at 977 n.8).

See also Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998). The Court noted that in determining literal infringement under &#sect; 112, &#para; 6, "the first step in interpretation of the claim is determination of the meaning of the words used to describe the claimed function." Id. at 1479. Citing Markman, the Court held that "[t]his claim interpretation is deemed to be a matter of law, and is reviewed de novo on appeal." Id.
District court decisions have treated the determination of equivalency as a question of fact. See Intelligent Peripheral Devices, Inc. v. Smartpad, Inc., 1998 WL 754606, *3 (N.D. Cal. Oct. 26, 1998) ("The question of what constitutes an 'equivalent' appears best committed to the finder of fact").

See also Motorola, Inc., v, Interdigital Tech. Corp., 930 F. Supp. 952 (D. Del. 1996), aff'd in part and rev'd in part, 121 F.3d 1461 (Fed. Cir. 1997). The trial court considered means-plus-function claims under &#sect; 112, &#para; 6, and concluded that "[c]onstruction of terms found in the claims or the specification is a legal inquiry, but evaluation of the function and structural equivalence of an allegedly infringing product is a factual inquiry." Id. at 964. Thus, the function described in the claim is a question of law, but the analysis of the accused product is a question of fact for the jury. Accord Stairmaster Sports/Med. Prods. Inc. v. Groupe Procycle, Inc., 1998 WL 290296, at *7 (D. Del. May 20, 1998); LRC Electronics, Inc. v. John Mezzalingua Assocs., Inc., 974 F. Supp. 171, 181 (N.D.N.Y. 1997).
To find literal infringement of a &#sect; 112, &#para; 6 claim, the trier of fact must determine whether the accused product contains a structure "equivalent" to the means disclosed in each individual limitation in the patent claim. See Endress + Hauser, 122 F.3d at 1043. The Federal Circuit, approving the claim construction and methodology of a district court in a bench trial, noted that "the district judge correctly recognized that the statutorily required construction under &#sect; 112, &#para; 6 must proceed on a limitation by limitation basis, not dissimilar to the analysis under the doctrine of equivalents." Id. (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.117 (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).

The tests for equivalency under &#sect; 112, &#para; 6 generally parallel the tests discussed in Hilton Davis concerning determination of infringement under the doctrine of equivalents. See Chiuminatta, 1998 WL 239335, at *7. A finding of lack of literal infringement for lack of equivalency under &#sect; 112, &#para; 6 will typically preclude a finding of equivalency under the doctrine of equivalence. Id. However, the Federal Circuit in Chiuminatta also emphasized a key difference, noting that the doctrine of equivalents is intended to protect a patentee from insubstantial changes in technology that occur after the patent is granted. Id. Consequently, in cases involving post-patent technological developments, lack of equivalency under &#sect; 112, &#para; 6 will not preclude a finding of infringement under the doctrine of equivalence. Id.
Prosecution history can be used to estop a patentee from claiming infringement of a means-plus-function claim just as prosecution history may estop a patentee from utilizing the doctrine of equivalents to find infringement. See Alpex Computer Corp. v. Nintendo Co. Ltd., 102 F.3d 1214, 1220-21 (Fed. Cir. 1996).

Preservation of Patent Validity

Prior to Markman, courts were to construe ambiguous claims in light of the specification and prior art to preserve the patent's validity whenever possible. Arthur Wineburg, What Hath Markman Wrought, *3 of 5 (Special to IP Worldwide; downloaded from Internet) (Sept./Oct. 1996) (citing Texas Instruments v. United States Int'l. Trade Comm'n, 871 F.2d 1054, 1065 (Fed. Cir. 1989)). The Federal Circuit recently reaffirmed this general rule in the context of interpreting prosecution history. See Eastman Kodak, 114 F.3d at 1547 ("This court seeks to interpret claims to preserve, rather than defeat, their validity.").
The Markman (Fed. Cir.) opinion has modified and clarified the application of this general rule by granting primacy to intrinsic evidence, and holding that extrinsic evidence (including prior art) may not be used to contradict or vary the claim language. See Markman, 52 F.3d at 980-81. It is well-established that "claims must be interpreted and given the same meaning for purposes of both validity and infringement analyses." Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d 1420, 1429 (Fed. Cir. 1997). Markman has led some courts to decline to consider prior art in interpreting claim language, reserving all such issues for the separate inquiry into validity.

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.

See also Stairmaster, supra. In its briefs on claim construction, the alleged infringer attempted to argue issues of invalidity. Id. at *2 n.5. The district court refused to entertain the argument, noting that the Court of Appeals for the Federal Circuit "has consistently rejected this approach to claim construction and continues to draw a line between claim construction issues and issues of infringement and invalidity." Id.

Procedures to be Used in Markman Hearing
The Markman decision did not spell out the procedures to be used by the trial court in construing the claims. See En Liung Huang v. Auto Shade, Inc., 945 F. Supp. 1307 (C.D. Cal. 1996). In Auto Shade, both parties requested that a Markman hearing be held prior to the jury trial. Id. at 1308. The court noted that "[t]he exact character of the Markman trial is currently unsettled in the federal courts. What is clear is that prior to the jury trial portion of a patent case, the court must hear arguments, take evidence as it deems necessary in its discretion, and make a determination, as to the meaning and scope of the patent claims in question." Id. Therefore, the court held a separate pre-trial Markman hearing at which the parties submitted briefs, declarations, and oral argument. Id. at 1308-09.

Compare Chad Indus. v. Automation Tooling Sys., 938 F. Supp. 601 (C.D. Cal. 1996), with Lucas Aerospace Ltd. v. Unison Indus., L.P., 890 F. Supp. 329 (D. Del. 1995). In Chad, the judge read the Markman (Supreme Court) decision as allowing the court to determine the relative credibility of different sources of evidence. Id. at 604. Moreover, the court did not strictly adhere to the rules of evidence at the hearing, and excluded evidence if the probative value seemed too marginal to justify the time required to receive it. Id. This interpretation does not square with the understanding of the Lucas court. In Lucas, Judge Schwartz interpreted (and strongly criticized) the Markman (Fed. Cir.) opinion as requiring trial judges to ignore all but transcribable courtroom occurrences to avoid credibility assessments. Id. at 333 n.7. Lucas, however, preceded the Supreme Court decision.
A number of district courts have considered separate Markman hearing unnecessary, especially if expert testimony will not be presented. See LRC Electronics, Inc. v. John Mezzalingua Assocs., Inc., 974 F. Supp. 171 (N.D.N.Y. 1997). In LRC Electronics, the accused infringer moved for a separate Markman hearing prior to summary judgment, while the plaintiff argued that the court should delay claim construction until the end of the trial. See id. at 180. The court noted that "nowhere in the Markman decision does the Supreme Court state that courts must hold a pre-trial, or pre-summary judgment, hearing on the issue of claim construction." Id. at 181. However, since the Markman decision a number of district courts "have held some sort of hearing." Id. (citing cases). The court held that an actual hearing to define claim terms is necessary only if the court intends to receive expert testimony. Id. Therefore, the court denied the motion and interpreted the claim term on the spot using the claim, the specification, and a Webster's dictionary. Id. at 181-82.

See also Roberg v. 20th Century Plastics, Inc., __F. Supp. 2d __, 1999 WL 123316 (D.N.J. Jan. 5, 1999) (hearing not held after parties agreed that it would be unnecessary); Elkay Mfg. Co. v. Ebco Mfg. Co., 1998 WL 397844, at *9 (N.D. Ill. July 13, 1998) (memorandum opinion) ("Pursuant to the parties' agreement, we resolved the Markman issue on the paper record without a hearing."); Interactive Gift Express, Inc. v. CompuServe Inc., 1998 WL 247485, at *1 n.3 (S.D.N.Y. May 15, 1998) ("[N]o Markman hearing is needed in this case because the Court does not require expert or other testimony to aid it in its claim construction."); Brosnan v. Rollerblade, Inc., 1998 WL 209155, at *3 (N.D. Cal. April 27, 1998) (holding formal claim construction hearing unnecessary since both parties had thoroughly briefed and argued claim interpretation issues in prior filings).
Markman makes it clear that the trial court retains the discretion to receive any evidence it deems relevant during the course of claim interpretation. See Markman, 52 F.3d at 979-81. See also Endress + Hauser, Inc., 122 F.3d at 1042 ("[A]s we made abundantly clear in Markman, the trial court has wide latitude in the kinds of aids, including testimony of witnesses, employed to assist in the job of claim interpretation as a matter of law.") However, the court may not rely upon expert testimony (or other extrinsic evidence) to reach an interpretation contrary to the intrinsic evidence (claim, specification, file history). See Bell & Howell Document Management Prods. Co. v. Altek Sys., 132 F.3d 701, 707 (Fed. Cir. 1997) (In reviewing the denial of a preliminary injunction, the Federal Circuit ruled that the lower court erred in relying upon expert testimony where a contrary definition was unambiguously set forth in the intrinsic evidence.
What is the Proper Time for Claim Construction?

The Markman (Fed. Cir.) decision created an "obligation" for the court to instruct the jury on the meaning of words used in a claim. Elf Atochem, 894 F. Supp. at 850. A district court has three options: (a) resolve the dispute on the paper record, (b) hold a hearing to resolve the disputes, or (c) wait until trial and attempt to resolve claim disputes on the eve of jury instructions. Id. In light of the de novo standard of review applied to claim construction, parties might choose to seek early resolution of construction issues through Fed. R. Civ. P. 56 or 12(b)(6). Id. at 857. The parties may also seek interlocutory appeal to avoid the need for a second trial if the Federal Circuit reverses the trial court's claim construction on appeal from a jury verdict. Id. See also Auto Shade, 945 F. Supp. at 1308-09.

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).

But see Somfy, S.A. v. Springs Window Fashion Division, Inc., __ F. Supp. 2d __, 1999 WL 170341 (N.D. Ill. Mar. 19, 1999) (District court agreed to construe claims on an expedited basis where action began as a preliminary injunction).
Markman Hearing: Appropriate to Construe the Claims Prior to Trial?

"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.

See, e.g., Schering Corp. v. Amgen, Inc., 25 F. Supp. 2d 293 (D. Del. 1998) (one day evidentiary hearing). Neles-Jamesbury, Inc. v. Fisher Controls Int'l, Inc., 989 F. Supp. 393 (D. Mass. 1998) (Gorton, J) (three day hearing); Comark Communications, Inc. v. Harris Corp., 1997 WL 87260, at *1 (E.D. Pa. February 24, 1997) (Bechtle, J.) (two day evidentiary hearing); Revlon Consumer Prods. Corp. v. L'Oreal S.A., 170 F.R.D. 391 (D. Del. 1997) (Schwartz, J.); P.A.T. Co. v. Ultrak, Inc., 948 F. Supp. 1506 (D. Kan. 1996) (O'Connor, J.); Chad Industries, 938 F. Supp. 601 (C.D. Cal. 1996) (Edwards, M.J.); Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., 906 F. Supp. 798 (E.D.N.Y. 1995) (Loral I) (Rader, J. sitting by designation) (two day evidentiary hearing); Elf Atochem, 894 F. Supp. 844 (McKelvie J.) (same).
Some district court judges argue that Markman hearings should take place in the context of conventional motion practice. See Mediacom Corp. v. Rates Tech., Inc., 1998 WL 195995, at *2 (D. Mass. April 16, 1998) ("Free-standing Markman hearings are of little use in actual litigation and may, indeed, run afoul of the 'case and controversy' limitation on judicial power expressed in the Constitution."). In Mediacom, the court noted that a Rule 56 summary judgment motion is a particularly appropriate vehicle in which to conduct a Markman hearing. Id. at *2 & n.2.

See also Johnson Products Co., Inc. v. Pro-Line Corp., 1998 WL 699024 (N.D. Ill. Oct. 5, 1998) (claim analysis as part of opinion ruling on motions for summary judgment). Ahlstrom Mach., Inc. v. Clement, 1998 WL 413575, at *1 (D.D.C. July 17, 1998) (Markman hearing and motion for summary judgment argued together); Storer v. Hayes Microcomputer, 960 F. Supp. 498 (D. Mass. 1997) (claim analysis as part of opinion ruling on pre-discovery motions for summary judgment); Lee's Aquarium & Pet Prods. v. Python Pet Prods., 951 F. Supp. 1469, 1472 (S.D. Cal. 1997) (Markman hearing held as part of summary judgment process), aff'd, 152 F.3d 945 (Fed. Cir., 1998) (table, text available at 1998 WL 129903). But see Stairmaster, 1998 WL 290296, at *1 (parties argued and district court decided claim construction separate from any other motion).
Several district court judges in Delaware expect to hold Markman hearings in jury cases after discovery is completed, but a few months before trial. Pegram, supra, at 566. The case of Thorn EMI v. Intel Corp. comports with this approach. Thorn EMI v. Intel Corp., 936 F. Supp. 1186, 1189 (D. Del. 1996) (Immediately before trial, the court held a hearing to construe remaining disputed claims).
Local rules may develop to govern the timing of Markman hearings. See Local Rules of the United States District Court for the Northern District of California, Civil L.R. 16-6 -- 16-11.
On the other hand, some writers have apparently argued for pre-discovery construction. Hoffman, supra, at *3-4 of 7 (Since claim interpretation is frequently dispositive, it is efficient to hold a Markman hearing early in the case, perhaps even before full-scale pre-trial efforts); Arthur Wineburg, What Hath Markman Wrought, *2 of 5 (Special to IP Worldwide; downloaded from Internet) (Sept./Oct. 1996) (An early Markman hearing might facilitate early interlocutory appeal to the Federal Circuit and prevent later waste of resources because trial court construed claims differently than the Federal Circuit ).

See also Pave Tech, Inc. v. Snap Edge Corp., 952 F. Supp. 1284 (N.D. Ill. 1997). In Pave Tech, a magistrate judge held a Markman hearing prior to the jury trial. Id. at 1287. While both parties objected to portions of the magistrate judge's report, the court denied all objections to the report and recommendation, and adopted that report for the purpose of claim construction. Id.

Claim Construction at the Close of the 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).

Other Options?

Yet another option approved in Markman itself would entail construing the claim in the context of dispositive motions, such as a judgment as a matter of law. Hoffman, supra, at *3 of 7 (quoting Markman, 52 F.3d at 981). Hoffman suggests that some of the Markman (Fed. Cir.) language allows a judge to "submit claim interpretation to the jury, obtain an advisory opinion, and defer the court's interpretation to post trial motions." Id. Hoffman criticizes this approach, noting that failure to instruct the jury on the meaning of the claims could result in unsalvageable error. Id. If claim construction is put before a jury, the verdict should be treated as advisory. Laitram Corp. v. NEC Corp., 62 F.3d 1388, 1394 (Fed. Cir. 1995).
Appellate Standard of Review

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 Digital Biometrics, Inc. v. Identix, Inc., 1998 WL 394371, at *7 (Fed. Cir. July 2, 1998) (Plager, J.) ("We review a district court's claim construction anew and without deference."); Strattec Security Corp. v. General Automotive Specialty Co., Inc., 126 F.3d 1411 (Fed. Cir. 1997) (Rich, J.) ("We owe no deference, however, to a jury verdict reached upon an improper claim construction where, as is the case here, the correct construction of the claims is dispositive of the issue of infringement.").

Intersection of Markman & Hilton Davis: Doctrine of Equivalents -- Judge or Jury

Once a claim has been construed, the same interpretation must be employed to determine both literal infringement and infringement under the doctrine of equivalents. Pegram, supra, at 570 (citing Senmed, Inc. v. Richard-Allen Medical Industries, 888 F.2d 815, 818 (Fed. Cir. 1989)). Although Pegram speculated that the Supreme Court might change this doctrine in Hilton Davis, the Hilton Davis decision left the Senmed doctrine intact.

See also Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998). In Medzam, the Federal Circuit applied the Graver Tank test (function, way, result) to determine infringement under the doctrine of equivalents, and applied that test to each element of the patent claim in accordance with Hilton Davis. Id. at 1480. The court held that the trier of fact determines infringement under the doctrine of equivalents, but that the meaning of the claim terms are construed as a matter of law. Id. at 1480. See also Evans Med. Ltd. v. American Cyanamid Co., 1998 WL 312506, at *6 (S.D.N.Y. June 10, 1998) ("[O]nce the Court has construed the claims, the jury determines as an issue of fact whether the claims, as thus construed, are infringed -- either literally or under the doctrine of equivalents -- by the accused product or method.").
Although infringement under the doctrine of equivalents is a question of fact, summary judgment is appropriate where the evidence is such that no reasonable jury could find equivalency. See, e.g., Laitram Corp. v. Morehouse Indus., Inc., 1998 WL 220092, at *7 (Fed. Cir. May 5, 1998) (citing Hilton Davis). In Laitram, the patentee appealed a district court's summary judgment of noninfringement under the doctrine of equivalents. Id. The Federal Circuit upheld the district court, applying prosecution history estoppel to one claim and concluding that no reasonable jury could find equivalency with respect to a second claim. Id.

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.

But see Cole v. Kimberly-Clark Corp., 102 F.3d 524 (Fed. Cir. 1996), cert. denied, 118 S. Ct. 56 (1997). In this post-Markman, pre-Hilton Davis case, the Federal Circuit reviewed the district court's claim construction de novo. The construction of the claim led to the conclusion that the plaintiff was estopped from asserting infringement either literally or under the doctrine of equivalents. Id. at 532. The prosecution history showed the patentee had relinquished such coverage to preserve the patent. Id.
Although application of the doctrine of equivalents remains a jury function, claim construction often determines the outcome of the trial. See Tanabe Seiyaku Co. v. United States Int'l. Trade Comm'n, 109 F.3d 726 (Fed. Cir. 1997), cert. denied, 118 S. Ct. 624 (1997). Tanabe petitioned the ITC for a determination that various pharmaceutical companies were infringing the process patent it utilized in the manufacture of CARDIZEM. Id. at 727. The various companies used a base-solvent that was not within the literal language of Tanabe's claim; therefore Tanabe brought its petition under the doctrine of equivalents theory. Id. at 729. The ITC affirmed the ALJ's finding of no infringement. Id. at 728. On appeal, the Federal Circuit reviewed the ITC's claim construction de novo, and reviewed the ultimate issue of infringement (under the doctrine of equivalents) as a matter of fact under the "substantial evidence" standard. Id. at 731. The claim was construed very narrowly, which in turn influenced the scope accorded the doctrine of equivalents. The substitution of solvents was viewed as a substantial change in light of the narrowness of the claim. Id. at 732. The Federal Circuit affirmed. Id. at 734. (Note: The court considered the foreign prosecution history only for the purpose of claim construction, not to establish an estoppel. Id. at 733.)

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).

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

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