Markman v. Westview Instruments, Inc.

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Markman v. Westview Instruments, Inc.
Seal of the United States Supreme Court
Argued January 8, 1996
Decided April 23, 1996
Full case nameHerbert Markman and Positek, Incorporated, Petitioners v. Westview Instruments, Incorporated and Althon Enterprises, Incorporated
Citations517 U.S. 370 (more)
116 S. Ct. 1384; 134 L. Ed. 2d 577; 1996 U.S. LEXIS 2804; 64 U.S.L.W. 4263; 38 U.S.P.Q.2d (BNA) 1461; 96 Cal. Daily Op. Service 2788; 96 Daily Journal DAR 4642; 9 Fla. L. Weekly Fed. S 540
Case history
PriorDirected verdict for defendant, 772 F. Supp. 1535 (E.D. Pa. 1991); affirmed, 52 F.3d 967 (Fed. Cir. 1995); cert. granted, 515 U.S. 1192 (1995).
Interpretation of patent claim terms is a matter of law for the court to decide.
Court membership
Chief Justice
William Rehnquist
Associate Justices
John P. Stevens · Sandra Day O'Connor
Antonin Scalia · Anthony Kennedy
David Souter · Clarence Thomas
Ruth Bader Ginsburg · Stephen Breyer
Case opinion
MajoritySouter, joined by unanimous
Laws applied
U.S. Const. amend. VII

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), is a United States Supreme Court case on whether the interpretation of patent claims is a matter of law or a question of fact.[1] An issue designated as a matter of law is resolved by the judge, and an issue construed as a question of fact is determined by the jury.


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 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 province of the court.

In general, the effectiveness of a particular patent depends on its potential at blocking 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. Prior to this decision, juries had the responsibility of deciding what the words used in patent claims meant. 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 prior to the start of the actual trial. Patent infringement suits now often settle after this stage of the litigation process.

Supreme Court decision[edit]

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.

Law firms involved[edit]

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]

See also[edit]


External links[edit]