Background
Herbert Markman held a patent on an inventory control system for tracking clothing in dry cleaning establishments — a system that used optical character recognition to read tickets attached to garments and update an inventory database. Westview Instruments made a competing system. The key disputed claim term was “inventory” — Markman argued it covered the cash received from transactions, while Westview argued it meant only the garments being tracked. The district court had submitted the claim construction question to the jury, which sided with Markman. The Federal Circuit reversed, holding that claim construction is a legal question for the court, not a factual question for the jury.
The Supreme Court granted certiorari to decide whether patent claim construction is a question of law or a question of fact — and whether submitting it to the jury is constitutionally required under the Seventh Amendment’s right to jury trial.
The Court’s Holding
The Supreme Court unanimously affirmed the Federal Circuit. The Court held that patent claim construction — interpreting the words of patent claims to determine their legal scope — is a question of law to be decided by the judge, not a question of fact for the jury. The Seventh Amendment’s guarantee of a jury trial does not extend to questions of law, and claim construction is a legal determination about the meaning of a legal instrument (the patent).
The Court based its decision on functional considerations as well: judges, not juries, are better positioned to interpret complex technical patent documents; judicial claim construction promotes uniformity and predictability in patent scope; and the complexity of patent claim interpretation — involving the specification, prosecution history, and technical expert testimony — is more suited to the court than the jury. The ruling established the “Markman hearing” as a standard pretrial proceeding in patent cases.
Key Takeaways
- Patent claim construction is a question of law for the judge to decide — not a question of fact for the jury — establishing that patent scope is determined by the court before trial in a Markman hearing.
- The Markman hearing (claim construction hearing) became one of the most important procedural steps in patent litigation: the court’s construction of disputed claim terms often determines the outcome of the case, because claim construction determines whether the accused product or method falls within the patent’s scope.
- Because claim construction is a question of law, Federal Circuit review is de novo — district court claim constructions are not given deference on appeal (though Teva v. Sandoz (2015) added clear error review for underlying factual findings that inform claim construction).
- Markman decisions are frequently appealed and frequently reversed, contributing to high Federal Circuit reversal rates in patent cases — reinforcing the importance of thorough, well-documented claim construction arguments at the district court level.
Why It Matters
Markman v. Westview Instruments was one of the most structurally significant patent procedure decisions of the 20th century — it fundamentally changed how patent cases are litigated by removing claim interpretation from the jury and creating the Markman hearing as a critical pretrial event in patent litigation. The ruling made patent claim construction into a central battleground of patent law: the judge’s construction of disputed claim terms typically determines whether infringement can be proven or whether invalidity arguments succeed.
In the years since Markman, the Federal Circuit developed its claim construction jurisprudence through Phillips v. AWH Corp. (2005) and Teva v. Sandoz (2015), building a complex framework for interpreting patent claims that requires courts to balance textual analysis, specification context, prosecution history, and technical expert testimony. Together, Markman, Phillips, and Teva form the procedural and doctrinal foundation of modern patent claim interpretation — the analytical framework that determines the scope of virtually every patent asserted in U.S. litigation.