holding that the inventor’s subjective intent is entitled to little or no probative weight except as documented in the prosecution history and that “the focus in construing disputed terms in claim language is not the subjective intent of the parties to the patent contract when they used a particular term [but] rather is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean”
How later courts described this case
- holding that the inventor’s subjective intent is entitled to little or no probative weight except as documented in the prosecution history and that “the focus in construing disputed terms in claim language is not the subjective intent of the parties to the patent contract when they used a particular term [but] rather is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean”
- holding that "[t]he court may, in its discretion, receive extrinsic evidence in order 'to aid the court in coming to a correct conclusion’ ”
- finding that, at least as to expert opinions that are merely legal opinions, “the court has complete discretion to adopt the expert legal opinion as its own, to find guidance from it, or to ignore it entirely, or even to exclude it.”
- explaining that an infringement analysis entails two steps: (1) determining the meaning and scope of the patent claims asserted to be infringed; and (2) comparing the properly construed claims to the product accused of infringing
Written by the judges who cited it.
The opinion
RADER, Circuit Judge,
concurring in the judgment.
The result in this case is the same whether or not claim construction may sometimes involve subsidiary fact issues. In this case, the claims, specification, and prosecution history irrefutably show that cash transaction totals are not “inventory.” Inventor Markman’s “after-the-fact testimony” to the contrary “is of little weight compared to the clear import of the patent disclosure itself.” North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1577 , 28 USPQ2d 1333, 1337 (Fed.Cir.1993), cert. denied, - U.S. -, 114 S.Ct. 1645 , 128 L.Ed.2d 365 (1994). The testimony of Markman’s patent law expert is not evidence at all. Cf. Nutrition 21 v. United States, 930 F.2d 867 , 871 n. 2,18 USPQ2d 1347, 1350 n. 2 (Fed.Cir.1991). In sum, the record lacks substantial evidence supporting Markman’s asserted claim interpretation. Thus, the trial court correctly granted judgment as a matter of law that Westview did not infringe. See Read Corp. v. Portec, Inc., 970 F.2d 816, 821 , 23 USPQ2d 1426, 1431 (Fed.Cir.1992).
To dispose of this case, this court need not decide whether subsidiary fact issues may sometimes arise. Markman cannot manufacture a fact issue where none exists. This court’s extensive examination of subsidiary fact issues is dicta.
In commenting on this concurrence, the court claims that whether claim construction can involve subsidiary fact issues “is before us and it is our obligation to decide it.” The court, however, neglects the logically antecedent question of whether substantial evidence supports the jury finding rejected by the trial court. See Read, 970 F.2d at 821 . Where, as here, substantial evidence does not support the finding, it does not matter whether the issue is one of law or fact.
Whether claim construction can involve subsidiary fact issues is not before us. It is our duty not to rule on this question. The court should decline to answer a question better left to a case that truly raises it, and therefore provides an informed basis for its resolution.
Transaction totals are not, as a matter of law, “inventory.” Westview infringes only if transaction totals are “inventory.” Therefore, the district court correctly granted *999 judgment as a matter of law that Westview does not infringe. I concur in the judgment.