Judges Should Decide Issues in Patent Suits, High Court Says

Judges, not juries, should decide some key issues in patent-infringement lawsuits, the Supreme Court ruled Tuesday.

Judges’ expertise is needed to decide the scope of patent owners’ rights, the justices said unanimously in a Pennsylvania case.

The ruling could be a blow to patent holders, particularly individuals. Juries tend to side with individuals in patent cases against corporations, when those cases are viewed in David-versus-Goliath terms.

The Constitution’s 7th Amendment guarantees jury trials in civil lawsuits for money damages. But Justice David Souter said the interpretation of patent claims is a matter of law to be decided by judges.

“Judges, not juries, are better suited to find the acquired meaning of patent terms,” Souter wrote.

Souter quoted 19th-century Supreme Court Justice Benjamin Robbins Curtis, a patent expert, as saying judges should interpret the patent itself, whereas the question of whether the patent was infringed should be decided by a jury.

The decision upholds a federal appeals court ruling that rejected a patent-infringement claim by Herbert Markman of Norristown, Pa.

Markman owns a patent for a device he calls an “inventory control and reporting system for dry-cleaning stores.” He and Positek Inc. of Norristown, which is licensed to use Markman’s invention, sued Westview Instruments Inc. of Houston. Their lawsuit contended that a dry-cleaning industry device manufactured by Westview and used by Philadelphia-area dry cleaner Althon Enterprises infringed Markman’s patent.

After a federal jury ruled that Markman’s patent had been infringed, U.S. District Judge Marvin Katz threw out the jury verdict and ruled that no infringement occurred.

The judge said the meaning and scope of a patent was an issue exclusively for judges, not juries. And he ruled that Markman’s patent focuses on helping dry cleaners keep track of clothes while the allegedly infringing invention focuses instead on keeping track of customers’ invoices.

The U.S. Court of Appeals for the Federal Circuit, the Washington-based court that hears appeals in all patent cases, upheld Katz’s ruling last year.

In Tuesday’s decision affirming the lower court ruling, the justices cited a need for uniform decision making in patent cases.

“Uniformity would, however, be ill-served by submitting issues of document construction to juries,” Souter wrote.