SUPREME COURT OF THE UNITED STATES

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No. 95-26

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HERBERT MARKMAN AND POSITEK, INC., PETITIONERS

WESTVIEW INSTRUMENTS, INC. AND ALTHON ENTERPRISES, INC.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT

OF APPEALS FOR THE FEDERAL CIRCUIT

[April 23, 1996]

JUSTICE SOUTER delivered the opinion of the Court.

The question here is whether the interpretation of a so-called 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.

The Constitution empowers Congress "[t]o 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." U. S. Const., 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 (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 the invention but avoid the literal language of the claim by making a noncritical change," Schwartz, supra, at 82. In this opinion, the word "claim" is used only in this sense peculiar to patent law.

Characteristically, patent lawsuits charge what is known as infringement, Schwartz, supra, at 75, and rest on allegations that the defendant "without authority ma[de], use[d] 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 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. 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.

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. ___ (1995). We now affirm.

The Seventh Amendment provides that "[i]n 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, 28 F. Cas. 745, 750 (No. 16,750) (CC Mass. 1812), we have understood that "[t]he 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 (1935). In keeping with our long-standing 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 (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 6-9.

As to the first issue, going to the character of the cause of action, "[t]he 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 (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).

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 9-11, 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 (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 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 (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 (1920); Walker v. New Mexico & Southern Pacific R. Co., 165 U. S. 593, 596 (1897); but see Sun Oil Co. v. Wortman, 486 U. S. 717, 727 (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 (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 (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").

Prior to 1790 nothing in the nature of a claim had appeared either in British patent practice or in that of the 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, "[t]he 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 of patent cases that we have from this period 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. 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 that the validity of any

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