Cybor Corporation v. Fas Technologies, Inc., and Fastar Ltd., Defendants-Cross

PLAGE R, 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 ease was taken in bane 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 bane) (hereinafter Mark-man 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, 379-86 , 116 S.Ct. 1384, 1391-93 , 134 L.Ed.2d 577 (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 , 13 S.Ct. 881, 882 , 37 L.Ed. 745 (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 *1463 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 / 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 mu.ch 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.