Thank you for asking me to take a look at the material you cited. Caveat: as I have stated in the past, I don't practice patent law, in the sense of drafting patents. I am a litigator, a jack of all trades and a master of none. I have worked on a couple of patent matters, but most of what I know about patents I have learned from my husband, a senior patent examiner. Nevertheless, I can understand the Cybor case easily because it has to do with standards of appellate review, which is a subject I am well-versed in.
You can read the Cybor case yourself, it's on-line, at law.emory.edu
It's well-written, fairly easy for me to understand, but I think maybe for the layperson the concurrance (for the layperson, a concurrance isn't the law of the case, it's an opinion by a judge who agrees with the majority but has something to add) by Judge Plager is easier to understand, as follows: (my interpretation is at the end, set off by a string of asterisks)
>>United States Court of Appeals for the Federal Circuit
96-1286, -1287
CYBOR CORPORATION,
Plaintiff-Appellant,
v.
FAS TECHNOLOGIES, INC. and FASTAR LTD.,
Defendants/Cross-Appellants.
PLAGER, Circuit Judge, concurring.
The concerned reader of the several opinions in this case might be led to believe that there is more to this case than there is. This otherwise unremarkable case was
taken in banc for the sole purpose of laying to rest any residual doubts about how, in claim construction, the verbalizations surrounding the familiar "fact-law"
dichotomy should be understood. I join the court's opinion and judgment, eliminating the unnecessary obfuscation that seems to have emerged since our decision in
Markman v. Westview Instruments, Inc., 52 F. 3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995) (in banc) (hereinafter Markman I).
In Markman I we held that "claim construction is a matter of law," and that "the construction given the claims is reviewed de novo on appeal." Id. at 979. The
Supreme Court agreed with our view, and concluded that the Seventh Amendment right to trial by jury was not an obstacle. Markman v. Westview Instruments,
Inc., 517 U.S. 370, ___, 116 S.Ct. 1384, 1391-93 (1996) (Markman II).
At the trial stage of a patent infringement suit, this means that the trial judge is obligated to determine the meaning of the claims, and, if a jury is used for the
infringement phase, to instruct the jury accordingly. In the course of seeking to understand the nature and scope of the invention set forth in the claims, it is standard
doctrine that the judge focuses on the language of the claims, as explained by the patent's written description, and as constrained by the course of the patent's
prosecution. If need be, the trial judge may seek understanding outside the patent proper, from relevant texts and materials, and from experts in the art. None of this
involves "fact-finding" in the sense of the traditional fact-law dichotomy. See, for example, the Supreme Court's effort to decide whether a tomato was a "fruit" or a
"vegetable." Regarding the meaning of those words, the Court said: "Of that meaning the court is bound to take judicial notice, as it does in regard to all words in our
own tongue; and upon such a question dictionaries are admitted, not as evidence, but only as aids to the memory and understanding of the court." Nix v. Hedden,
149 U.S. 304, 306-07 (1893).
The effort is to understand the meaning of the terms in the claims. To the extent that involves delving into factual matters, such materials simply become part of the
process of understanding. It hardly seems necessary to state that the point of seeking understanding of the terms in which the claims are cast is not for the sake of
understanding in the abstract, but to ensure as much as the intrinsic nature of language permits that the court's interpretation is a correct one.
On appeal, this court has the benefit of the trial judge's considered view, and the record of the effort made at trial to assist the judge in understanding the terms of the
claim. Though we review that record "de novo," meaning without applying a formally deferential standard of review, common sense dictates that the trial judge's view
will carry weight. That weight may vary depending on the care, as shown in the record, with which that view was developed, and the information on which it is
based.
It may or may not be true that the trial judge will have had virtually unlimited time and opportunity to pursue the matter. In any event, just where the comparative
advantage in claim construction effort and accuracy lies in any particular case will be observable on appeal, and will no doubt influence the weight given to the trial
court's view. And just as three minds are deemed better than one in deciding appeals, four minds may often be better than three when a complex claim construction
is at issue.
This court's decision in Markman I, reaffirmed today, simply means that we do not spend our and appellate counsels' time debating whether the trial court's
information base constitutes findings of "fact" or conclusions of "law," with verbally different standards of review. Instead both they and we can focus on the question
that the trial court addressed, the question that counts: what do the claims mean? As we all recognize, that is not always easy to know, and much turns on the
answer.
The decision today should help institute a simplified and clarified method by which both trial and appellate courts address claim construction issues, pursuant to the
rules established in this court's Markman I opinion. Our purpose is to improve the process of patent infringement litigation for the benefit of patentees and their
competitors, and ultimately the public. Whether this approach to patent litigation will in the long run prove beneficial remains to be seen. There is every reason to
believe it will, and certainly to believe it is better than what we had. But it may be some time before we have enough experience with "Markman hearings" and with
appellate review under the new regime to draw any empirically sound conclusions. In such circumstances there is much to be said for refraining from premature and
argumentative judgments about what it all means, and for allowing sufficient time to actually see how it works.<<
***********************************************
My comments again:
Cybor affirms both Markman I and Markman II. In Markman II, the Supreme Court was asked whether the Seventh Amendment right to trial by jury was infringed. Judge Archer, who wrote the majority opinion in Cybor, stated as follows: "When it (the Supreme Court) answered that question by stating that "[w]e hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court," id., the (Supreme) Court held that the totality of claim construction is a legal question to be decided by the judge." In other words, there is no Seventh Amendment right to have a jury decide disputed patent interpretation claims.
To restate it, the construction of a patent is exclusively a question of law, and shall be decided by the trial judge. This includes disputed terms of art. This is because there are no genuine issues of disputed fact, which would require a jury.
For example: in an automobile accident, the plaintiff says that her light was green, the defendant says *she* had the green light. The resolution of these conflicting claims requires the testimony of both parties, and the jury is the one who listens to both of them and decides who is telling the truth. That is a genuine issue of disputed fact.
In a patent case, there are no disputed issues of fact because all the facts are known. The thing is what it is. The only dispute is as to the legal significance of the facts, and in Markman I and Markman II, as affirmed by the United States Supreme Court, and made plain in Cybor, the determination of the legal significance of undisputed facts is a matter for a judge, not a jury.
On appeal, the Court of Appeals does not have to give any deference to the findings by the trial judge, although they probably will, just because the judge heard the trial and is more familiar with all the facts. This means that pretty much every patent case involving claim interpretation is going to be appealed, and there will be no certainty until the appellate process is done.
Hope this helps. It was fun, I like it when I can contribute something to the discussion. |
