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

cáse, proposition for the copyright that for infringer a nbnwillful the award ’should be CORPORATION, CYBOR post-tax profits. based on Plaintiff-Appellant, v. argues Nike the award should be profits, citing Schnadig pre-tax based on TECHNOLOGIES, INC., FAS and Fastar Corp. Mfg. Gaines Ltd., Appellants. Defendants-Cross (6th 1169-71, USPQ 207-09 Cir. 96-1286, Nos. 96-1287. 1980), ease; § Berlyn and Kalman v. 1473, 1482-83, Corp., 914 F.2d Appeals, United States Court (Fed.Cir.1990), a ease involving Federal Circuit. profits § points 284 lost calculation. Nike March infringers’ out that an award of post-tax profits appellants leave would refunds,

possession of their tax and that if appellants, enjoy profit still the award

can profits” not be their “total as mandated Shoe,

by the statute. See Hanover Inc. v. Corp., 481, 503,

United Shoe Mach. (1968);

88 S.Ct. 20 L.Ed.2d 1231

Kalman, F.2d at Shoe). (citing Hanover The district agreed position, with that as do we. requires disgorgement

The statute

infringers’ profits patent holder, such infringers profit retain no from their

wrong.

IV

SUMMARY

We reverse the district court’s ruling that marking apply statute doés not to recov-

ery design patent infringement under

§ and remand for determination of

whether complied Nike fact with the

marking requirement. We affirm the district

court’s methodology accounting on the issues.

Costs

No costs. PART,

AFFIRMED IN REVERSED IN

PART AND REMANDED. Gamlen, McKenzie,

Tod L. Baker & Alto, CA, argued plaintiff-appellant. Palo Roche, him With on brief was David I. Chicago, IL.

Douglas Luce, Cawley, Hughes A. & L.L.P., Dallas, TX, argued for defendants- appellants. him cross on brief was With Aubrey Nick Pittman. MAYER, RICH, Judge,*

Before Chief NEWMAN, ARCHER, Judges, Circuit MICHEL, Judge,** Senior Circuit PLAGER, LOURIE, CLEVENGER, RADER, SCHALL, BRYSON, and GAJARSA, Judges. Circuit Opinion by for the court filed Senior ARCHER, Judge Circuit in which Circuit RICH, MICHEL, PLAGER, Judges LOURIE, CLEVENGER, SCHALL, BRYSON, join; and GAJARSA Circuit Judge joins part RADER as to IV. Concurring opinions by filed Judges Circuit Opinions PLAGER and BRYSON. * ** Archer, Judge Mayer Judge Chief Haldane Robert assumed the Senior Circuit L. Glenn Jr. vacat- position Judge position Judge ed the of Chief on December of Chief on December 1997. 1997. BACKGROUND Chief judgment filed concurring . MAYER, Judge which Circuit Judge The ’837 discloses device Judge joins, and Circuit NEWMAN accurately dispensing method for industrial filed Circuit Additional views RADER. liquids. primary patented use of the NEWMAN, Judge which Chief Judge dispense inventions is to small volumes of joins. MAYER liquid onto wafers. Claim 1 is semiconductor ARCHER, Judge. Senior Circuit representative and reads:1 filtering dispensing In a device for (Cybor) appeals from Corporation Cybor manner, precisély fluid in a controlled District judgment of the United States California, of: the Northern District combination Court for (Oct. 31, 1995), Cybor 93-CV-20712 means; pumping first 5226, infringes the claims of pump, Model commu- means fluid (the 5,167,837 patent), No. ’837 U.S. Patent means; pumping nication with said first FAStar, exclu- Ltd. and currently owned Technologies, Inc. sively licensed to FAS filtering means between said first and FAS). cross-appeals the (collectively FAS means, whereby pumping second said first calculation, the damages judgment as to pumps through pumping means the fluid damages, and the refusal of enhanced denial filtering pump- said means said second exceptional and to award to declare the case means; argument panel A heard oral attorney fees. first which each said opinion is- January Before its on pumping means includes surfaces that con- sued, however, Sep- sponte sua on this court fluid, being said surfaces of mate- tact the this case be 1997 ordered tember non-contaminating to indus- rials decided banc. high trial which are viscous fluids and/or judgment court’s We affirm the district shear; purity sensitive to molecular and/or doing, conclude that entirety. In so we its unanimous affirmance Supreme Court’s comprising means to enable said second Instruments, Inc., in Markman v. Westview dispense pumping means to collect and/or 370, 116 1384, 134 L.Ed.2d S.Ct. both, fluid, peri- during at rates or or (Markman (1996) II), judg of our banc both, inde- operation, which are ods fully supports our conclu ment in that case operation, pendent periods of rates or construction, legal purely as a sion that claim both, respectively, of said first issue, appeal. subject to de novo review means. Instruments, Markman v. Westview patent pre- illustrates a 1321, 1329 Figure 967, 979, USPQ2d I). (in bane) (Fed.Cir.1995) of the invention: ferred embodiment {Markman para- not written in tions. 1. The actual claim is here; graph we have added the form as shown limita- for ease of reference to the claim's breaks embodiment, preferred pumping

In the simultaneously fluid means accu- system through tubing filtered enters the dispensed. mulated and The filtrate is dis- through valve 24 to travels ball pensed precise measurements the sec- pumping tubing first means via 41. The pumping through tubing ond means 120 16 at pumping pumps liquid means 30 then during periods operation rates and through back the ball valve which rotates independent pumping of the first means tubing open tubing to close 102. The liquid then flows to the filter means 100 stage pump by Cy- dual manufactured (fil- liquid which it is filtered. The filtered purpose bor is used for the same as that of trate) through then tubing flows 116 and into patented application liquid the second means 120. The filtrate invention — immediately precise, small volumes dispensed, can then be accumu- onto semiconductor upper compartment lated in the 131 of the wafers. It is illustrated below: invalid, device, verdict that the claims pump draws were In the accused Cybor literally infringed except all the through bottle a feed claims liquid from a source remain- through three-way solenoid valve. these three line and infringed passage then claims were under doctrine The solenoid valve closes equivalents. jury the in- opens the line to the determined the source bottle and filter, liquid fringement except to be willful for all claims allowing pump 1 to deliver the passes through claim 16. liquid After the the filter. filter, to a reservoir the filtrate flows verdict, jury liability After the rendered its 2, pump where it accumulates external Cybor’s court denied renewed district pump dispensed by until 2. It is uncontested Judgment as a Matter of Law motion for reservoir, coupled with the that the external (JMOL) infringe it did not the ’837 system pump, allows the to accumu- patent, FAS’s motion for an and also denied late, dispense, simultaneously accumulate or attorney pur- exceptional case fees award dispense filtrate. The filtrate leaves the and (1994). § Prior to the suant to 35 U.S.C. 285 three-way solenoid through reservoir another however, this court entry judgment, of final valve, connector, enters the second and I, that claim decided Markman which held pump. valve then closes the The solenoid of law to be deter- construction is matter opens the passage to the reservoir and dis- Cybor exclusively by judge. then mined port, through pump which the second pense of its filed a motion for reconsideration dispenses through the the filtrate back sole- decision, light in of that but JMOL motion dispensing through noid valve and court ‘denied reconsideration. district port and line. damages, the proceedings on After further 11, 1995, 23, 1993, filed its Cybor court on October September sued FAS district On Law Findings Fact and Conclusions of declaratory judgment non-infringe- for a making, ment, enjoining Cybor from invalidity, unenforeeability permanently and system, awarding FAS using, selling its patent. counterclaimed2 for the ’837 FAS $130,912 denying FAS’s mo- twenty sought damages, and infringement of all claims and damages under 35 U.S.C. pro- tion for enhanced damages injunctive relief. The case and (1994). court its trial, by § The district entered jury special found 284 ceeded to and joined after the Technologies gies as a counterclaimant was 2. Both and FAS filed FAStar ' Cybor’s orig- complaint. completed. FAStar alone liability answer to trial on counterclaim, inally but FAS Technolo- filed 1454 rejecting unhelpful, as on October and other evidence judgment

final resolving disputes pro- en route to appeals followed. these nouncing meaning language of claim DISCUSSION patent on the matter of law based docu- themselves, ments the court is not credit- I. ing certain evidence over other evidence or of a A. This court reviews denial evidentiary findings. making factual Rath- by reapplying novo motion for JMOL de er, looking the court to the extrinsic Portee, Corp. Read v. JMOL standard. See evidence to assist in its construction of the 821, 1426, Inc., 816, USPQ2d 23 document, required written a task it is (Fed.Cir.1992). standard, Under this 1431 perform. The district court’s claim con- of a motion for we can reverse a denial struction, enlightened such extrinsic ev- jury’s JMOL if the factual helpful, idence as be is still based if supported by substantial evidence or upon patent prosecution history. legal implied jury’s conclusions from the construction, It is therefore still and is a supported verdict cannot law be those subject matter law to de novo review. Chrysler findings. Corp., Kearns v. 32 See USPQ2d Id. at 52 34 at F.3d 1331 1541, 1547-48, USPQ2d F.3d 31 1751 omitted). (emphasis in original and footnote (Fed.Cir.1994). Supreme After Court’s decision II, panels gen Markman of this court have infringement analysis An involves two erally followed the review standard Mark- First, steps. scope determines the Corp., man I. See Serrano v. Telular 111 asserted, claims (Fed.Cir.1997); 42 F.3d 1538 II, 371-73, at see Markman U.S. Co., Alpex Computer Corp. v. Nintendo properly then the S.Ct. con (Fed.Cir.1996); F.3d compared allegedly strued claims are Techs., Inc. Contracting, v. Cat Insituform Inc., device, infringing Corp., see Read 970 F.2d at (Fed.Cir. 1098, 40 USPQ2d F.3d 821, USPQ2d Although at 1431. the law 1996); Transp. Cryo-Trans, General Am. judge, jury, is clear that the and not the is to (Fed.Cir. 766, USPQ2d claims, presents construe the this case 1996). cases, however, clearly In some proper issue of the role of this court applied erroneous has been standard find reviewing the court’s district claim construc ings considered to factual nature that tion. judge’s are incident construction of I, that, In Markman we held because patent claims. Eastman Kodak Co. v. law, purely claim construction is a matter of Goodyear Tire & Rubber this court reviews the district court’s claim (Fed.Cir. 1737, USPQ2d 42 1742 appeal. construction de novo See Mark 1997); Serrano, 1586, 111 F.3d at 42 I, 979, 981, USPQ2d man 52 at 34 at 1544, J., USPQ2d (Mayer, concurring); at 1329, conclusion, reaching 1331. In this we 534, Wiener v. NEC Elecs. 102 F.3d recognized that 539, 1023, USPQ2d (Fed.Cir.1996); 41 1026 [tjhrough process construing this claims 938, Sys. Cooper, Metaullics Co. v. 100 F.3d by, among things, 939, (Fed.Cir.1996).3 using 1798, other certain ex- USPQ2d 40 1799 helpful trinsic evidence that the court finds We ordered that this ease be decided in bane 980, 967, language patent. It is to reconcile difficult the the See id. at 34 reasoning opinion in this court's recent in From USPQ2d Supreme at 1330. The Court in effect Plates, Inc., 1437, Printing son v. Anitec credibility confirmed this when it stated that the (Fed.Cir. 1997), USPQ2d with Markman among experts determinations "will be sub- I, although opinion purports to do we so. As necessarily sophisticated analy- sumed within the I, stated in Markman evidence [such "extraneous II, sis of the whole document.” Markman expert testimony as the ] in Fromson is to be used 389, Fromson, U.S. at 116 S.Ct. at 1395. understanding patent” for the court's of the primarily speci- district court "relied on the '754 so, doing crediting in the court "is not certain fication which describes Fromson’s first anodiza- making evidence over other evidence or factual step porous producing tion as oxide” barrier. [a] I, evidentiary findings.” Markman 52 F.3d at Fromson, 1442, 132 F.3d at at 1272. 981, (emphasis original). at 1331 in Although expert Rather, the extrinsic testimo- we considered such evidence to be aid evidence — art, ny, prior coming and scientific to the court in to a tests —confirmed correct conclusion as construction, meaning language employed true of the in district court’s claim it direct- conflict, support we conclude that claim construction assert from the this to resolve language stating II standard of review as stated Markman that “con- the de novo good struing receipt law. a term of art after Markman I remains of evi- 378,116 “mongrel practice,” is a id. at dence” Supreme B. The Court framed “ may S.Ct. at and that the issue ‘fall[] in Markman II question before it pristine legal somewhere between a standard interpretation of a “whether the alternative: ” fact,’ simple a id. historical at patent ... is a matter law so-called claim Fenton, (quoting at 1395 Miller v. S.Ct. court, subject entirely reserved for the 445, 451-52, U.S. 106 S.Ct. guarantee that a a Seventh Amendment (1985)). L.Ed.2d 405 These characteriza- any disputed will determine the tions, however, only prefatory comments expert testimony is term of art about which demonstrating Supreme recogni- Court’s II, Markman 517 U.S. at offered.” ' patent tion that the determination of whether added). (emphasis When it at 1387 S.Ct. question claim construction is a of law or fact by stating that “[w]e answered cut; simple they sup- not or clear do not patent, of a includ hold that the construction port the view that the Court held that while claim, art within its is exclusive terms of legal question judge, construction is a for the court,” id., province ly within the underlying questions. there also be fact totality that the of claim construc Court held contrary, To the the court noted that legal question to be tion is a decided an issue “falls somewhere when between Supreme judge. Nothing Court’s pristine legal simple standard and a histor- opinion supports the view that the Court fact, ical distinction at times silent, option fact/law third endorsed —that that, has turned on a determination as a subsidiary may involve or un construction justice, matter of sound administration of contrary, questions fact.4 To the derlying judicial positioned actor-is than one better expressly “treating in the Court stated that question.” another to the issue in decide terpretive purely legal promote will issues intrajurisdictional Fenton, (though guarantee) not (quoting Id. Miller v. application 445, 451-52,

certainty through the stare 106 S.Ct. 88 L.Ed.2d 405 subject (1985)) added). Thus, questions yet those not (emphasis decisis on the Su interjurisdictional uniformity under the au addressing preme Court was under which appeals law, at thority single court.” Id. category, fact or claim construction added); (emphasis 116 S.Ct. at 1396 see should fall and not whether should be (“ 387,116 ‘Questions having components, also id. at S.Ct. fact and classified as two questions construction are of law for the law. jury’” judge, questions of fact for the supporting the conclusion that Further Walker, § (quoting A. Patent Laws 75 at 173 pure issue of law is claim construction is (3d 1895))). Indeed, ed. the sentence demon analysis Supreme of the role of Court’s Supreme strates that Court endorsed testimony in claim construction. Gen- expert providing unifor this court’s role in national impor- erally, recognized has the Court - claim, mity construction of a by juries evaluating played tant role impeded if we were bound role would witness, key credibility of a a consideration give judge’s to a trial asserted deference appropriate judicial actor determining in incident to claim con factual determinations Miller, 474 at an issue. See U.S. decide struction. 451-52. In the context of 106 S.Ct. at construction, however, rea- the Court claim opinions suggest- in some of our cases that, credibility determinations to what soned while that there should be deference in claim con- theoretically play a role underpinnings to be factual could asserted thin, tronic, Inc., USPQ2d primarily nonporous 39 ed to whether Anitec’s (Fed.Cir.1996). extent, layer infringed 1578 the claims. To this oxide holding affirming in Fromson so, surely -Supreme follows Markman I. Court court’s claim If this were subsidiary Management v. Altek whether or un- See Bell & Howell Document would have discussed 701, 705-06, Sys., questions USPQ2d derlying should be decided 45 fact (Fed.Cir.1997); jury. Corp. Concep- judge or the 1038 Vitronics 1456 including any allegedly questions

struetion, of such an occurrence is fact-based the chance “any credibility relating Accordingly, to claim construction. determi “doubtful” and today any language previous within the neces we disavow nations will be subsumed holds, analysis the whole sarily sophisticated opinions purports doc of this court that ument, hold, states, required by anything the standard construction con suggests see, Fromson, way 1444, 45 in a e.g., defined trary, rule that a term can be 132 F.3d at (“The as a comports the instrument USPQ2d at 1274 district court’s find II, Markman at whole.” ings scientific/technological fact were ma 388, 116 id. at 1395; see also S.Ct. at S.Ct. at terial to the issue of construction of the term (“ testimony may of witnesses Kodak, ”); ‘[T]he 1394-95 Eastman ‘anodizing.’ F.3d at received____ interpre But in the actual 1555-56, be (affirming at 1742 dis proceeds upon patent the court tation of the “recognizing court’s claim construction trict responsibility, as an arbiter its own ability both the trial court’s ‘trained to evalu law, patent its true and final giving to the [expert] testimony ate in relation to the over ” (quoting force.’ W. Robin character and patent’ all the trial structure of the (1890))). son, Law Patents § at 481-83 position court’s to ascertain ‘better whether a is consistent with the view Such conclusion expert’s proposed fully com definition construction, claims____’” as a form of “docu that claim ports specification with the construction,” 388-90, id. at ment 116 S.Ct. II, (quoting Markman at U.S. solely subject question of law Wiener, 1394-95)); 116 S.Ct. at 102 F.3d at review, novo as noted above. See Mark de 539, USPQ2d Markman II (citing at 1026 I, at-981, man at 1331. controlling as our standard of review and quoting language from Mark- parenthetically Moreover, opin- Supreme Court’s while “ man II that claim construction ‘falls some conclusively repeatedly states that ion pristine legal where between purely legal, another standard and claim construction is Metaullics, fact.’”); simple view of the decision also demon- historical Court’s (“[Because 939, USPQ2d strates that our standard of review remains F.3d at at 1799 primary intact. The Court’s concern question claim construction is a mixed of law Markman II was the Seventh Amendment fact, may required we to defer to a right jury to a trial on issue whether findings. trial court’s factual a dis Where party claim construction inured to a due to part trict court makes of fact as any potential factual issues involved. Be- construction, we not them set cause the Court did discuss (citations omitted)). aside absent clear error.” review, Markman II can be read standard of II. addressing solely respective roles of judge at the trial level and not Cybor argues appeal in this that the dis- relationship between the district courts improperly trict court construed two Although and this court. our conclusion in means-plus-function limitations the rele- Markman I that claim construction is a mat- vant claims of ’837 “second —the respects, ter of law in all was affirmed even pumping means” and the “means enable” II this narrower view of Markman leaves pumping the second means to accumulate I Markman controlling authority as the re- liquid, dispense liquid, Cybor or both. also garding our standard of review. challenges the district court’s construction of Thus, requiring the limitation that the fluid flow “to we conclude that the standard of I, above, a second means.” All of Markman review in these ar- as discussed guments turn on the changed by Supreme was not Court’s whether the II, decision Markman refusing to limit the and we therefore district erred that, scope purely legal question, reaffirm as a of the claims based on statements we claim construction de novo on appeal prosecution.5 during review made to the examiner 8, Here, Cybor’s arguments USPQ2d 5. Because claim construction 977 n. 34 at 1327 the n. 8. narrowing scope required equivalence given jury relate to the of claim was by prosecution history, Cybor challenge equivalence we need not consider does not the of its ¶ 112, equivalence ques- prosecution history § whether under 6 ais accused device if does not I, scope Cybor argues. of law or tion fact. See Markman 52 F.3d at narrow the of the claims as

1457 applicant the had surrendered the prose- the lieve that Cybor contends that particular, In subject relevant matter. See allow the claimed history does not cution Insituform Techs., Inc., Inc., Contracting, v. Cat any cover reser- means” to pumping “second (Fed. 1098, 1107-08, USPQ2d 1602, is external to accumulating fluid that voir Cir.1996). Cybor’s reservoir pump. the second Because external, that its second Cybor argues Cybor responses by relies on two pumping meet the pump does not second inventors to the examiner’s obviousness re alone, pump limitation. Its second means position jection of the claims for its that a reservoir, is regard to the external without pump any external reservoir structure limitation of satisfy the functional not able to prosecution. given up during In each means to “accu- enabling pumping the second instance, had Storkebaum the examiner cited dispense liquid, or both.” liquid, (Storkeb- al, 4,749,476 mulate No. et U.S. Patent reservoir, Cy- intervening aum). external an With not col Storkebaum’s container fluid does not flow argues also that the permeate; discharges bor it also vents or lects from the filter pumping conveying means The container “to” second the fluid. feeds big pump powers the claims. that the flow of a circula required means loop. design tion of Storkebaum is not 112, ¶6, § an accused A. Under dispensing of In for the controlled fluid. not identical device with structure response, argued the inventors first literally patent will structure described specifically provides separate “Storkebaum performs if infringe the device collecting permeate. container 12 for Obvi required by the claim with identical function ously, the collec Storkebaum does not teach in equivalent to that described a structure tion of fluid in a second means.” Chem., patent. Micro Inc. v. Great See added). (Emphasis response to a later Co., 1538, 1547, 41 Plains 103 F.3d Chem. rejection, argued that the inventors “Stork- (Fed.Cir.1997): 1238, USPQ2d 1245-46 permeate collecting ebaum discloses a con history to the con Prosecution is relevant separate conveying tainer 12 that is from the means-plus- struction of a claim written Nothing, in pump 13. Storkebaum discloses v. Telec function form. See United States invention, makes obvious the claimed nor tronics, Inc., 778, 782, USPQ2d 857 F.2d precise provided by control flexible (Fed.Cir.1988); 1217, 1220 Corp. Rite-Hite (Em pump means of 1.” the second Claim 1123, 1120, USPQ2d Kelley 819 F.2d statements, phasis original). From these (Fed.Cir.1987). Indeed, 1915, “just as precluded from Cybor contends that FAS is estop prosecution history estoppel may act to asserting pump with an exter that a device equivalence argument under the doctrine equivalent under nal reservoir is a structural ¶ equivalents, positions taken before the 112, § that the patented 6 to its device and law, may position court, an inconsistent PTO bar should not district as a matter ¶ 112, Alpex, § permitted jury claim construction under 6.” to consider its exter have determining the dif USPQ2d nal reservoir in whether 102 F.3d at at 1673. Clear pump Cybor’s second ferences between support patentability assertions made patent’s pumping means the ’837 range equivalents thus affect the ¶ were insubstantial. § American under 6. Perma Cf. Barcana, Inc., hedge, Inc. v. responds that the district court made FAS (Fed.Cir.1997); regarding required determinations all of Alternatives, Mfg., so, Athletic Inc. v. Prince and, doing fully claim construction history at prosecution issue. considered (Fed.Cir.1996). inquiry is claims to the The relevant It then the construed submitted infringement.6 reasonably jury for its competitor would be- determination whether adequate- recognizes Cy- Cybor was not concurring opinion 6. contends that the One also meaning We ly of the claims. instructed on the solely arguments bor’s claim construction relate note, however, this case was tried before history prosecution requires to whether that, I and while a fuller instruction Markman , exclusion of the external "reservoir structures might .jury of the claim he the desirable, on the Cybor’s equivalent as an like from consideration instructions were erroneous. 112(6).” Concurring Opinion § under Moreover, denial of the mo- the district court’s Mayer, infra, Judgment Judge of Chief additional, approved for reconsideration tion materially differs not convinced that the district The Storkebaum device We are patented from the invention. Storkebaum in its claim construction or court erred filtering system separate pres- a Cybor’s motion for JMOL. The dis- discloses denying limitations, liquid sure sensitive substances from a sus- court construed several or trict pension. conveying pump oper- a that language, in the claims. With re- It has disputed pumping through large limita- ates to circulate the fluid spect to the second means tion, loop. separate that it “refers to closed circuit It also has a jury the was instructed regulate to the structure dis- reservoir to collect and the amount a structure identical Thus, specification patent, permeate of the in the closed circuit. the closed in the structure, per- apparatus which container in the equivalent the to that Storkebaum has separate capability of forms the function of fluid the function and vent- aceumulator/dis- instruction, discharging liquid the in order pense pump.” With this dis- excessive scope prevent up liquids in not narrow the undesirable build trict did pump any system. with the language to exclude urged by Cybor. as In- external reservoir significant In view of the differences be- stead, jury the was instructed to determine patent tween the cited Storkebaum and the device, Cybor’s pump its whether with invention, including structurally claimed reservoir, structurally equiva- attached separate independent function container and lent it had the same functionali- and whether Storkebaum, discharging excess fluid ty pumping as the second means the ’837 prosecution properly statements cannot patent.7 interpreted precluding coverage of ev- reading patent From our document ery type particular, external reservoir. prosecution history, agree and the we agree apparent we with the district court’s jury court’s in- construction and only conclusion that these statements dis- quite it is structions. While clear the inven- physically claimed a unattached reservoir scope tors limited the of their claims to independent functionality. They has which reference, they overcome the Storkebaum physical- did not disclaim a reservoir which is emphasized separateness of Storkeb- ly pump connected to the ánd which container, physically aum’s both and func- dispensed by pump. collects fluid to be that compared tionally, as to the claimed inven- Thus, we that the conclude district court did example, tion. For the statements noted instructing jury not err in in a manner “provides separate that Storkébaum con- permit equiva- which would it to consider the tainer” and that it a container “that has is lency Cybor’s pump and reservoir to the separate conveying pump.” from the Further, pumping claimed second means. it specification patent of the ’837 elaborates on denying Cybor’s not err in did JMOL motion pumping the structure of the second means on this issue. and its “means to having tubing enable” as

connecting pumping Cybor challenges second means to the B. further the dis pump interpretation regarding second incremental advancement trict court’s claim means, see col. pumping lines 49-52. in the the claim While limitation that the first embodiment, preferred pumps through filtering the ’837 dis- means the fluid storage pump, pumping Cy- closed a reservoir inside “to” the means means. disputed language requires the claimed second bor contends that this pumping encompasses pump means liquid directly filtering both a flow from the having connecting tubing. and a reservoir means the second means without presumptive ently impossible Cybor’s pump, construction of the claims without a jury. reservoir, perform functions called for Thus; patent. jury had consider concurring opinion suggests 7. One that this court external, Cybor’s pump combination of and the cannot affirm the decision below under a de novo being "pumping attached reservoir as means” review, asserting standard of that the basis for equivalent pat- to the structure disclosed jury's disagree decision is unclear. We ent, pump which consisted of a with an internal could have had in mind the several reservoir. posited by pat- variations the concurrence. It is both, operation, respectively, components. periods of or any through additional passing means; pumping dispens- flows Cybor’s device of said first the fluid Because reservoir, Cybor ing by operating which said second through the external the fluid separate from the component pumping as a means. views means, Cybor ar- pumping claimed second 11. The method of claim 10 wherein said infringe. not gues that it does step by operating accumulating is achieved pumping on an said second means intake because, as reject Cybor’s arguments We at same rate at which said first stroke discussed, reservoir the external previously pumping pumping is means said fluid apparently held Cybor’s device was filter, through said so that the fluid which pumping part of its “second jury to be component. has been filtered is accumulated said separate not a means” and pumping being means without second dis- the district court’s agree also We pensed pumping from said second means. re- the “to” limitation interpretation 12. The method of claim 10 wherein said liquid move from quires step operating accumulating includes said pathway with a destination filter “in a pumping means to said fil- second draw pre- not pumping means” and does second than slightly greater tered fluid at a rate passing through inter- from clude the fluid being the rate at which said filtered fluid II New vening components. Webster’s Cf. means, (1984) (de- pumped by pumping such said first Dictionary 1214 Riverside Univ. toward”); slight of said fluid that there is drawback see a direction fining “[i]n “to” Vitronics, dispensing from a means of said second n. 90 F.3d at 1584 that, technically although pumping means. (noting at 1578 n. 3 evidence, to consult the court is free extrinsic added). (Emphasis 16 is a combina- Claim any help time to determine at dictionaries claim that-reads: tion terms). Nothing in the meaning of claim dispens- filtering In a device for history suggests prosecution or specification high-purity viscous and/or and/or put by Cybor. forth fluid, the combination of: a shear-sensitive interpretations, sub- Applying the above pump; filtering diaphragm-type first jury’s supports the verdict stantial evidence from means connected to receive the fluid literally infringes the Cybor’s device diaphragm-type pump; and a said first patent. Accordingly, we claims of the ’837 pump diaphragm-type connected to properly that the district court de- conclude means, filtering fluid from said receive the as to literal Cybor’s motion for JMOL nied of said first and second in which each infringement. pumps includes surfaces diaphragm-type fluid, being that contact the said surfaces III. non-contaminating to that are of materials Cybor challenges the denial of its also which are viscous industrial fluids and/or ground that its device motion on the JMOL molecular high purity sensitive to and/or infringe the ’837 under does not shear; comprising means to enable equivalents. deter doctrine diaphragm-type pump to col- said second 16 are not mined that claims both, fluid, dispense the or lect and/or infringed literally infringed but are under during periods operation, or rates or 10, 11, and equivalents. Claims doctrine both, independent .rates or which are 12 read: both, respectively periods operation, or filtering dispensing 10.A method for pump. diaphragm-type said first fluids which are viscous industrial and/or added). (Emphasis sensitive, purity shear com- high and/or that does accused device An steps pumping of: the fluid prising infringe literally infringe a claim still pumping means first through filtering if equivalents each the doctrine of means; under accu- pumping to second means in the accused the claim is met limitation of in second mulating the fluid n meansat rates or literally equivalently. See either opera- device during periods of Davis tion, both, Co. v. Hilton independent the rates or Warner-Jenkinson — -, -, range subject relinquished, prose- matter U.S. S.Ct. Chem. (1997); 1040, 1054, 146 see history 137 L.Ed.2d also preclude infringement cution does not Corp. Durand-Wayland, v. Pennwalt equivalents. under doctrine Accord- 1737, 931, 935, USPQ2d 4 1740 833 F.2d ingly, Cybor’s the district court’s denial (in banc). (Fed.Cir.1987) history Prosecution respect infringe- motion for JMOL with to legal estoppel provides a limitation on the equivalents ment under the doctrine of equivalents by application the doctrine error. excluding range equivalents sub from prosecution ject during matter surrendered IV. application patent. for the See War — that, cross-appeal, in argues light On FAS ner-Jenkinson, at -, 117 U.S. S.Ct. at jury’s Cybor’s in- of the determination that estoppel may The arise from matter willful, fringement was district as a result of amendments surrendered id., rejections, by refusing patentability overcome see erred both to find this case ex- argument allowance as a result of secure ceptional, denying attorney and thus fees Lab., claim, Wang Inc. v. of a see Mitsubishi (1994), § denying under 35 U.S.C. 285 Elecs., Inc., 1571, 1578, USPQ2d 41 103 F.3d damages § enhanced under 35 U.S.C. 284 (Fed.Cir.1997). 1263, 1269 Prosecution histo (1994). challenges FAS also the district legal subject ry estoppel is a to de approach calculating damages. court’s in appeal. Insituform, novo review on 99 A. The determination of wheth 1107, 40 USPQ2d F.3d at at 1609. and, thus, exceptional eligible er a case is Cybor argues infringement that there is no attorney § an award of fees under 285 is a equivalents under the doctrine because two-step process. See Reactive Metals and prosecution history estoppel precludes FAS ESM, Inc., Alloys Corp. v. 769 F.2d claiming from an external reservoir and both (Fed.Cir.1985). USPQ 226 824 pump equivalent pump- as an to the second a First, court must determine of claims 11 ing means and from exceptional, whether a case is a factual deter external, claiming an attached reservoir as mination reviewed for clear error. See Bald equivalent to the means to enable the Corp. win Hardware v. Franksu Enter. diaphragm-type pump in claim 16 to 550, 563, Corp., USPQ2d 78 F.3d accumulate, dispense, or both accumulate and (Fed.Cir.1996). determining After that dispense liquid. Additionally, Cybor that, exceptional, a case is urges because the has an the district court must accused device reservoir, intervening requir- the limitation attorney appro determine whether fees are the filtrate to flow to the second priate, a determination that we review for an equiva- means claims would not abuse of discretion. See Molins PLC v. Tex lently be met. tron, Inc., 1172, 1186, USPQ2d (Fed.Cir.1995). 1823, 1833 A district court arguments unpersuasive These for the abuses its discretion when its decision is rejected same reasons that we them under ¶ clearly fact, based on § erroneous our 6 claim construction and literal infringement analysis. interpretations based on inventor’s state erroneous regarding law, ments to the PTO unreasonable, the Storkebaum clearly arbitrary or is reference, given the marked differences be Fraige fanciful. See v. American-National patented tween the reference and the Corp., 295, 297, Watermattress devices, deliberate, accused do not show the (Fed.Cir.1993). 1149, 1151 unequivocal surrender of all external reser We conclude that the district court’s Portec, Inc., Corp. voirs. See Read exceptional clearly denial of status was not (Fed. specifically erroneous. The court that noted Cir.1992) (“Every pat- statement made it infringe considered the evidence of willful during prosecution distinguish entee Similarly, ment sufficient but weak. it con prior art separate reference does not create a estoppel. Arguments copying sidered evidence of also to must in con be be viewed text.”). Cybor’s pump Cybor’s Because weak. and reservoir The court concluded that ar connecting tubing guments litigation, do not fall within the ultimately while unsuc- Cybor although infringe was found to all cessful, or asserted for not frivolous were claims, Cybor litigated purpose twenty this result does not improper Finally, the court concluded good close, faith. particularly mean that the case was not supported Cybor’s contention that evidence light justifiable of its albeit unsuccessful system consider its good faith did not arguments regarding prosecution history infringing. patent. Finally, nothing of the ’837 supports arguments Cybor record FAS’s assertions,- Contrary FAS’s a find fashion; litigated inappropriate in an the dis- infringement require does not ing of willful actually contrary trict court found the to be exceptional. that a case is See Mod finding Thus, true. we conclude that the district Inc., Group, 917 Mfg. ine v. The Allen Co. court not in denying did abuse its discretion (Fed. USPQ2d F.2d damages. Cir.1990). enhanced Moreover, argument FAS’s mere Cybor’s defenses and claims were “base that Finally, C. FAS contests both the pursued in “bad faith” does not less” and calculating district court’s method in dam conclusions to undermine the district court’s ages damages and the court’s ultimate contrary. supports record evidence requires award. Section 284 that the dam Cybor act court’s conclusion district n ages adequate a claimant must awarded to Moreover, Cybor’s argu good in faith. ed compensate infringement. for Rite- ments, relating con particularly to claim 1538, 1544, Corp. Kelley Hite v. 56 F.3d prosecution history estoppel, struction and (in (Fed.Cir.1995) USPQ2d meritless, and resolution of those were not banc). damages The amount of determined was far from a fore issues in FAS’s favor by fact question a district court is a of that is gone conclusion. appeal, for clear error on reviewed while challenges B. FAS further by in reaching method used a district court district court’s decision not enhance for an abuse that determination is reviewed in The statute allows a damages this case. Stryker Corp. v. Intermed discretion. See damages “up to times court to enhance three 1409, 1413, Orthopedics, ies 96 F.3d amount found or assessed.” 35 U.S.C. (Fed.Cir.1996). 1065, 1068 USPQ2d (1994). damages § A denial of enhanced appeal § for an under 284 is reviewed argues that the court FAS district Electro Medical abuse of discretion. See by using a abused its discretion method that Sciences, Inc., Sys., Cooper S.A. Life stringent” thus .not was “too did afford (Fed. 1017, 1023 disagree. The adequate relief. We district Cir.1994). damages have been Enhanced performed thorough, court well-reasoned party is found to have will awarded when analysis underlying the of the facts award in fully infringed or to have acted bad faith. assertions, Contrary damages. to FAS’s willfulness, however, finding Id. A does in court acted within its discretion its evalua damages. not mandate enhanced See Read two-supplier concluding tion of the market 826, USPQ2d Corp., at at 1435. purchaser that FAS’s sale to would Instead, paramount determination ... “[t]he time that have occurred at same egregiousness of the defendant’s con is infringing sales occurred because FAS’s based on all the facts and circum duct purchaser. prior history As to the Id. stances.” methodology challenged aspects other of the conclude that the district court We FAS, court we conclude denying in did not abuse its discretion en appro in an. weighed the evidence before it damages. Particularly, note that hanced we inappro priate fashion. decline FAS’s We argument that a there is no merit essentially reweigh priate invitation that we finding of willfulness but a denial of en the record evidence. damages necessarily an abuse of hanced Modine, discretion. See CONCLUSION Indeed, court at 1624. district properly denied Because the district regarding will determined that the evidence JMOL, Moreover, abuse did not copying was weak. defendant’s motion fulness and words, damages methodology meaning in its its discretion Court said: “Of that damages, notice, in its not to enhance judicial decision court is bound to take as it clearly determining in that this did not err. regard in does to all words our own clearly exceptional was not err in case tongue; upon such a dictionar determining damages, the amount-of we af- admitted, evidence, ies are not as but firm. memory understanding aids to the Hedden, v.Nix 304, 306-07, court.” AFFIRMED. (1893). 881, 882, 37 13 S.Ct. L.Ed. 745 R, Judge, concurring. PLAGE Circuit The effort is understand the opin The concerned reader of the several the terms the claims. To the extent that might ions this case be led to believe that matters, delving involves into factual such there is more to this case than there is. This part simply process materials become otherwise unremarkable ease was taken understanding. hardly necessary It seems purpose laying bane for the sole to rest point seeking to state that the understand- how, any residual doubts about claim con ing of the terms in which' the claims are cast struction, surrounding the verbalizations understanding is not for the sake of in the dichotomy un familiar “fact-law” should be abstract, but to ensure as much as the intrin- join opinion I derstood. the court’s and language permits sic nature of judgment, eliminating unnecessary obfus court’s is a correct one. emerged cation that seems to have since our appeal, On this court has the benefit of the decision Markman v. Instru Westview view, judge’s trial considered and the record ments, Inc., of the effort at trial judge made to assist the (Fed.Cir.1995) (in bane) (hereinafter Mark- in understanding the terms of I). the claim. man novo,” Though we review that record “de In Markman I we held that “claim con meaning applying formally without defer- law,” struction is a matter of and that “the review, ential standard of common sense dic- given construction the claims is reviewed de tates judge’s carry the trial view will Id. at 979. The appeal.” Supreme novo on weight. weight may vary That depending on view, agreed Court with our and concluded care, record, as shown in the with which right that the Seventh Amendment to trial developed, that view was and the information by jury was not an obstacle. Markman v. Instruments, on which it is based. Westview 379-86, 1384, 1391-93, 116 S.Ct. 134 L.Ed.2d may may It not be true that the trial (1996) (Markman II). judge virtually will have had unlimited time stage patent At the trial of a infringement pursue and opportunity to the matter. suit, judge this means that the trial is obli event, any just comparative where the advan- gated to meaning determine the tage in claim construction accuracy effort and claims, and, if a infringe is used for the any particular lies in case will be observable phase, jury accordingly. ment to instruct the appeal, on and will no doubt influence the In the course seeking to understand the weight given to the trial court’s view. And scope nature and of the invention set forth in just as three minds are deemed better than claims, it is standard doctrine that the deciding appeals, one in may four minds of- judge claims, focuses language on the ten be complex better than three when a explained by patent’s descrip written claim construction is at issue. tion, and as constrained the course of the I, decision Markman This court’s reaf- be, patent’s prosecution. If need the trial today, simply firmed means that we do not judge may understanding seek outside the spend our and counsels’ time debat- patent proper, from relevant texts and mate ing whether the trial court’s information base rials, experts and from in the art. None of constitutes of “fact” or conclusions “fact-finding” this involves in the sense of the “law,” verbally with different standards of See, dichotomy. traditional fact-law for ex they review. Instead both and we can ample, Supreme focus Court’s effort to decide question on the “vegeta whether tomato was a “fruit” or a trial court ad- dressed, Regarding ble.” those that counts: what do expertise in light the Board’s such recognize, that As we all claims mean? know, matters, turns easy and much careful consideration always “is afforded is not Alvin, great respect.” the answer. Ltd. v. on and United (Fed.Cir. Serv., F.2d-1562 States Postal help institute a today should The decision 1987): Indeed, Supreme Court has made method which both simplified and clarified point referring to its re much the same con- address claim appellate courts trial and law, patent view of this court’s decisions issues, rules estab- pursuant to the struction “leave such re noting that the Court would opinion. / court’s Markman lished in this process legal applying improve the finement test for purpose [óf is to Our litigation for the benefit patent infringement equivalents] to Cir [the doctrine of Federal competitors, and ulti- patentees their judgment in this area of its sound cuit’s] approach this mately public. Whether special expertise.” v.Co. Warner-Jenkinson — prove long run litigation will U.S. -, -, Hilton Davis Chem. is ev- to be seen. There beneficial remains (1997). 117 S.Ct. 137 L.Ed.2d 146 will, certainly to ery to believe it reason Supreme in Markman stated Court But it than what we had. believe it is better it be a rare case in which claim that would enough we have may time before be some on an such as construction would turn issue hearings” experience with “Markman credibility judgment competing between two regime under the new appellate review expert witnesses. See 517 U.S. any empirically sound conclusions. to draw however, cases, 116 S.Ct. at 1395. Such to be there is In such circumstances mu.ch arise, entirely those cases would be argu- refraining premature from said for appropriate consistent with our charac- —and means, it all judgments mentative about what question terization of claim construction as a actually time to allowing for sufficient legal analysis our the of law—to factor into see how it works. superior court’s to one of the district access BRYSON, concurring. pertinent of construction. Judge, tools Circuit court with join opinion I While That does not mean that we defer to a reservation, important to note I think it out we legal district court on matters unless find adoption rule that claim con our that has committed clear error with that the court of law not mean struction is an issue does respect that should be character- issue by done disregard intend to the work that we it that we ized as factual. What means is construction or that courts in claim district approach legal issue of claim construction weight to a court’s give we will no district respect as- recognizing that with to certain construction, to claim no matter conclusion as task, may court be pects of the have reached that conclu how the are, than we and that as to better situated particular issue is Simply because a sion. about aspects we should be cautious those not mean question of law does denominated judgment for that of the substituting our reviewing weight court will attach no that the court. district by tribunal it to the conclusion reached fact, reviewing courts often ac reviews. MAYER, Judge, with whom Chief particular legal issues knowledge that as to NEWMAN, joins, Judge, Circuit PAULINE special competence and lower tribunals have concurring judgment. legal on issues should judgments their those judgment compelled I am to concur significant weight. exam accorded be For court, respectfully disagree I but ple, Supreme typically Court defers misappre- opinion profoundly it because adopted by the construction of a state statute Instruments, Markman v. hends Westview appeals that includes regional court of 116 S.Ct. 517 U.S. Clark, 337 Propper that state. U.S. (1996). Supreme The Court L.Ed.2d 577 1333, 1341-42, 472, 486-87, 93 L.Ed. 69 S.Ct. that the historical record concluded there (1949). Similarly, this court has rou juries that con- insufficiently firm to declare tinely although interpre contract noted that England patent claims in when the law, strued tation is a to the Constitution Appeals, Seventh Amendment by a Board of Contract of contract adopted 1541, 1547-48, (Fed. USPQ2d 1746, in 1791. So it decided as a matter of Cir.1994)). policy juries, judges, not are better able perform given complexity this task Our review of claim construction is con- evidence and documentation. This was a Supreme judgment trolled Court’s perilous juries last decision of resort. For Markman, U.S. S.Ct. not regularly render verdicts in civil eases based opinion reviewed, of this court it complex documentary forensic and evi- 967, (Fed.Cir.1995); equal greater difficulty dence of than seen Supreme adopt Court did not this court’s implications cases. And the reasoning as its own. Though it could have criminal cases under Article III and the easily, done so accept Court chose not to profound. Sixth are Amendment even more our formulation of claim construction: as a Increasingly complex involving cases scienti- pure question of law to be decided de novo in complicated documentary fic evidence had, appeal.1 all cases on If there would (cid:127) presented juries which, to criminal of have been no need for exegesis its extensive course, liberty, decide matters of life and about the Seventh Amendment and whether Nevertheless, merely money. having so juries must construe claims that have eviden- ruled, it seems to me the Court would not tiary underpinnings impor- or whether the repealed part also have of the Federal Rules tance of uniformity is best giving served of Civil Procedure and Evidence without so evidentiary questions these to a much as a mention that district courts no judge. It simple would have been a matter longer expert have discretion to admit evi- for the give Court to short shrift to this dence, see Daubert v. Merrell Dow Pharma- argument by proclaiming pure- construction ceuticals, Inc., 113 S.Ct. ly, solely, always a matter of law (1993), 125 L.Ed.2d 469 and need not find gone would never jury. have disputed facts when evidence is in these Supreme recognized Court cases. Nor would it have so excused this some cases there will conflicting evidence normal, court from ap- historical role of that has to be there are resolved —where pellate error, courts to review for reversible factual determinations that are more than collegial and installed it as a trial court. just incident to claim construction —such as I. STANDARD OF REVIEW understanding of one skilled in the art at patent application the time the In filed. review the denial of judg We a motion for cases, these all that Markman stands for is ment as a matter of by reapply law de novo that judge will resolving, do the not the ing the same standard. See Corp. Read v. jury. Wisely, Supreme stopped Court Portec, Inc., 816, 821, 970 F.2d USPQ2d 23 authorizing short of (Fed.Cir.1992). us to find 1426, facts de novo 1431 Under this stan evidentiary when dard, disputes part exist as appellant jury’s must show that “the construction of a findings, presumed factual claim and the district express, supported court has made by or, findings these without substantial if com evidence are, they mitting clear legal that the error. See v. implied conclusions Fromson Anitec Plates, Inc., jury’s Printing 1437, 1446, from the verdict cannot in law be 132 F.3d 45 supported by 1269, (Fed.Cir.1998) findings.” USPQ2d those Alpex 1275 (findings Com puter Co., Corp. 1214, v. Nintendo 102 F.3d of fact made a district court to resolve 1221, 1667, (Fed.Cir.1996) USPQ2d 40 disputes 1672 as to the meaning of claim terms are (quoting Chrysler Kearns v. Corp., error); 32 F.3d affirmed absent clear Eastman Ko- bluntly 1. Rather square than peg force the ties that we judge,” "independent ceded to a claim construction allocate,” into the round hole of fact or "treating interpretive reason to issues law, the questions presented Court described the purely Markman, legal promote____” will by claim chary construction in more terms: (em- 517 U.S. at 116 S.Ct. at 1390-96 course, available, "[b]ut the sounder when is to added). phasis cursory reading a Even of that classify mongrel practice," answers,” a "no clear opinion indicates that the Court meant to deter- theory case," "in there could be a "leaves us claims, interpret mine who should without doubtful," main," accordingly "fi]n the "[w]e mandating appellate a standard of review think there is sufficient reason to treat construc- .used under all circumstances. tion of many terms responsibili- of art like other

1465 Co., present- 114 on Goodyear & Rubber which record v. Tire dak Co. 1547, 1555-56, USPQ2d 1742 parties clearly 42 F.3d ed was not erroneous. (Fed.Cir.1997) (reliance testimony expert Supreme contemplated in Court never acceptable clarify ambiguous claim term is feign experi- that Markman we first-hand trial court’s given is and deference technology, ence with the or that we embell- determination). Rather, credibility when the by construing our abilities a claim without ish accepts the factual deter- judge finds facts respect due both a trial court’s decision jury, are entitled minations of a those facts dispute a factual underlies the than de novo fact find- greater deference of a claim term and its resolution of that appeal. ing on dispute. Fromson, judge admitted ex the trial that no factual about Provided develop pert testimony to the record on the disputed necessarily terms were in the made “anodized,” as it was meaning of the word claim, construing making course of our by one skilled the art at the understood supersedes claim construction that that of Fromson, 132 F.3d at time of the invention. court not inconsistent district with the 1444-45, USPQ2d at 1273-74. Based on opinion. v. Court’s See Serrano Telular evidence, “in he found 1973 no extrinsic (Fed. Corp., USPQ2d 111 F.3d practitioner process of this would reasonable (construction Cir.1997) of the claims involved opinion non-porous non- had the have disputed parties); factual no In between coating, as thin as the native adherent oxide Materials, ternational Communication Inc. naturally coating found 5 nanometer 316, 318-19, Ricoh 108 F.3d environment, oxide, phosphoric constituted (Fed.Cir.1997); USPQ2d 1958-59 Al Id. at an anodized surface.” Alpex’s expert pex, (using 102 F.3d 1214 finding limited the at 1274. This testimony against Alpex, there were no factu beyond meaning of the word anodized what dispute parties); al between Metaullics subject required: [a standard definition “[T]o Sys. Cooper, by making of a Co. v. to action the anode metal] [it] protective (Fed.Cir.1996); coating or deco cell before Insitu Id., 1437, USPQ2d Techs., rative film.” Contracting, Inc. v. Cat form (quoting Int’l Dictio at 1273 Webster’s Third (Fed.Cir.1996) 1098, USPQ2d nary). finding This also conflicted with the (attorney argument regarding con description alleged infringer’s of its own ox presented dispute no factual about struction process coating ide as anodization. Never Davis, technology); 1 & M. S. Childress theless, court construed word Federal Review: Civil Cases Standards of electrolytically “an anodized to mean: 2.13, §§ Principles, 2.14 and General Review formed, adherent, porous aluminum oxide (2d ed.1991). If not believe this does coating sufficiently (meaning thick thicker the claim construction to be erroneous based oxide)____” 1445, at 45 than native Id. independent legal conclu on an review of the USPQ2d pro at Because the accused sions a review of the constituent factual and coating not form an oxide thicker cess did evidence, findings for it must af substantial oxide, a than native the district court entered Corp. firm. See Bose v. Consumers Union of judgment noninfringement. States, 485, 31, 466 U.S. 514 n. 104 United disagreed we with the construc- Even had 1949, 1967 31, (1984); n. 80 L.Ed.2d 502 S.Ct. Fromson, given by the trial court in we tion Swint, also Pullman-Standard v. 456 see were not tasked our standard review 1781, 1789-90, 273, 102 72 U.S. S.Ct. days novo each of the of testi- reexamine de (1982). L.Ed.2d 66 mony relating to inter- and volumes of record not, however, may independent- This court pretation of the word anodized. This court disregard ly the constituent facts or review judgment not affirm the trial court’s be- did proof they jury’s findings, absent it the best construction of cause had educed that “a. reasonable lack sufficient evidence It so the word anodized. did because support” might accept adequate mind properly district court’s construction was NLRB, v. them. Consolidated Edison Co. predicated finding a what factual about 197, 206, 217, 229, 59 83 L.Ed. meant to one skilled the art 305 U.S. S.Ct. anodized 1466 Genentech, (1938); Inc. v. usually

126 see Wellcome court into a trial court of first and Ltd., 1555, 1565, USPQ2d Found. 29 F.3d 31 last resort. (Fed.Cir.1994). 1161, 1169 may Nor we con strue a claim in a manner that is inconsistent II. METHOD OF REVIEW review;

with our function as a court of we patent To determine whether á has been interpretations cannot divine new of terms in infringed, judge partake a district must of a a claim or make. of fact from a (1) two-step analysis: construction of the support record that cannot them. See Avia legal .by claims to determine their effect ex Group California, Inc. v. L.A. Gear Int'l alia, amining resolving, and inter factual dis Inc., 1561, 1557, USPQ2d 1548, 7 853 F.2d putes meaning scope over of techni (Fed.Cir.1988). 1551 patent, cal words or of art terms used necessary Sometimes it for an Fromson, 1442, USPQ2d see 132 F.3d at 45 appellate pronounce legal prin court to new 1272; Markman, 999, at 52 F.3d at 34 However, ciples during appeal. even if (Newman, USPQ2d J., at 1347 dissenting); a this court identifies of claim con (2) comparison properly a of the con though struction as one of its resolution law— device, strued claims to the accused see Car particular litigation is relevant Touch, Sys., roll Inc. v. Electro Mechanical activity document —it cannot elevate the Inc., 1573, 1576, 1836, USPQ2d 15 F.3d 27 determining legal principles, one of as is for (Fed.Cir.1993). step, 1839 The first con example, statutory construction. See Mark claim, struction ultimately ques man, 391, 517 U.S. at 116 S.Ct. at 1396 Markman, judge. tion for the (“[I]ssue preclusion could not be asserted 388, (“So at S.Ct. it turns out against independent infringement new and here, judges, juries, not are the better given jurisdic defendants even within a Freeman, tion.-...”); acquired meaning suited to find the 1459, In re terms.”) (Fed.Cir.1994); claims, construing judge Jordan, themselves, Jackson Inc. v. Plasser specifica American looks to the claims 1567, 1574-75, Corp., USPQ tion, F.2d prosecution history patent, (second (Fed.Cir.1984) alleged infringer 5-6 Mining Mfg. see Minnesota by prior not bound claim constrúction unless Orthopaedics, Johnson & Johnson had, alia, full opportunity it inter and fair 1559, 1566, (Fed. USPQ2d 1321, 1327 litigate the construction in in the first and, Cir.1992), necessary, if extrinsic evi action). Thus, fringement regardless of the dence for information or disputes to resolve questions, labels we attach to these without terms, meaning over the see Texas Instru full the benefit of a record from the trial ments, Inc. v. United States Int’l Trade court, it is neither the function of this court Comm’n, capacity nor is it within our as an (Fed.Cir.1993). Although Mark adopt interpretations, court to new most es man, requires Ú.S. 116 S.Ct. pecially if interpretation. not under re judge to make the ultimate determination view is of conflicting terms informed evi about the legal consequence dence. Such indiscriminate and conclusive claim, prohibit does him from submit deprives parties review important sub ting subsidiary disputes factual jury, to a procedural stantive provid mechanisms if it encourage even does not it. courts, ed in the trial where judge step follows the same first by can be informed discovery additional containing means-plus-func construe claims expert testimony, and where it can be 112(6) tion § limitations under 35 U.S.C. by appellate checked review aas matter of (1994). 1220, Alpex, See 102 at 40 right. If claim construction is ques Phonometrics, Intellicall, USPQ2d 1672; Inc. v. at tion of law to be by -reviewed this court de c., 1384, 1388, novo, 952 F.2d 21 then the absence of review aas matter In (Fed.Cir.1992). 1383, USPQ2d right 1387 constructions, over Howev our claim which er, may complete unsupported new and the construction of these by legal analy sis, terms, may means-plus-function or judge never by have been tested must process, adversarial structures, materials, would transform this look to the or acts

1467 -, -, 1040, 1054, patent’s specifications and U.S. 117 S.Ct. 137 in the disclosed Id., 1388, (1997). However, at equivalents. 952 F.2d they to their L.Ed.2d 146 because USPQ2d 1387. To determine the 21 at separate origins, purposes, applica- have equivalents, the district court scope of such tions, determining equivalence para- under by resorting questions resolve fact must 112(6) graph requires analysis different expertise of the fact finder. Cf. equivalence from that used to determine un- Markman, 8, USPQ2d at 977 n. 34 52 F.3d equivalents. Alpex, der the doctrine of See 1337, (expressly declining to reach at n. 8 1222, (“Un- USPQ2d 102 F.3d at 40 at 1673 of whether determination “the issue 112, § der the concern is whether the ac- 112, para. ques- § 6 is a equivalents under device, performs cused which the claimed fact”); Hayes law or In re Micro- tion of function, equivalent has the same or an struc- Prods., Inc., 1527, 982 F.2d 1541- computer specifi- as the ture structure described (Fed.Cir.1992) 43, 1241, 25 1253 corresponding cation to the claim’s means. (“This may be consid- list factors [of equivalents, Under the doctrine of on the determining scope of a ered when hand, question other is whether the ac- means-plus-function is not ex- limitation] only insubstantially cused device is different by inferences haustive and reasonable device.”) (internal than the claimed citations appropriate.”); King fact finder are Instru- omitted). 853, Corp. Corp., v. 767 F.2d ment Otari (Fed.Cir. 402, USPQ judge means-plus- 408-09 After the construes the Co., 1985); Don-Joy structures, v. 762 F.2d Palumbo identifying funetion limitations (Fed.Cir.1985) 969, 975-76, 5, USPQ materials, patent’s or acts described in the (“Whether § device is a accused specification, equivalents and their as deter fact.”); equivalent ... is a one, by (step mined the fact finder described D.M.I., 755 F.2d Inc. v. Deere & above), judge gives the construed claims (Fed.Cir.1985). USPQ finder, jury, to the fact in this case a for a reasons, pragmatic the resolution of For D.M.I., infringement. determination of this factual determination is often made at USPQ 755 F.2d at 239. For at in- the same time the fact finder determines infringement, literal the fact finder must de below). two, fringement (step described performs termine whether the accused device infringement analy step The second of the an identical function to the one recited requires comparison a factual sis means-plus-function clause. See Pennwalt device, claimed invention accused to. Corp. Durand-Wayland, v. which is done the fact finder. See Win (Fed.Cir, 931, 934, USPQ2d (15 How.) Denmead, ans v. (if 1987) per function is not the identical (1853). prove in 14 L.Ed. 717 To literal formed, possible). infringement literal is not fringement, patentee must show that the performed, the identical function is If every device contains limitation in accused fact finder must then determine whether Dolly, the asserted claims. See Inc. accused device the same structure utilizes Cos., 394, 397, 29 Spalding & Evenflo specification, materials as described in the (Fed.Cir.1994). If tried equivalents. their jury, jury’s factual to a infringement Just as the fact finder’s anal- infringement that are reviewed this court ysis equivalence para- under differs between evidence, for lack of substantial see Genen 112(6) tech, 1168-69, graph equivalents, and the 1565, USPQ2d doctrine 29 F.3d at analytical effect of state- part reapplication of this court’s so too differs the judgment as a matter of law. during prosecution standard ments made of the claims. Under on construction infringement A the doctrine claim of under 112(6), paragraph during a statement made step by this equivalents modifies range equiva- prosecution confine requiring that the fact determine finder structures, materials, that are lent or acts particular whether differences between ele- However, patent. directly claimed the ments of the accused device and the asserted analy- equivalents the of a doctrine context claims are insubstantial. See Wamer-Jen- —Co., sis, beyond patentee protection kinson v. Hilton Davis Chem. the Co. seeks such, directly. patent pump patent, that claimed As Like the disclosed the ’837 of the claims—which judge’s Cybor Corporation’s dual-stage construction Model interpretation- of claim terms— includes the pump pump dispense also allows users to or may to remove from not be sufficient highly liquid accurate amounts of chemicals jury’s subject all consideration matter in increments as small as 0.1 microliter. during prosecution. was disclaimed pumps primarily Both used for accurate- ly dispensing photoresist chemicals—such as history estoppel addresses this

Prosecution polimide and semiconductor wafers problem by excluding equivalents surren —onto during their fabrication. during prosecution. Under this doc dered trine, rejec statements made to overcome , appeal, Of relevance to this in construing based, here, prior estop art tions as patent judge interpreted the ’837 patentee extending right from its to exclude disputed term “to” and submitted the from-making, using, selling subject others or jury term to the for a determination of in- insubstantially matter to be known different fringement. judge The also submitted the from, with, interchangeable or ele claimed means,” pumping terms “second “means to alleged infringe ments at the time of the means,” pumping enable said second and “or , — at-, ment. U.S. Warner-Jenkinson jury means-plus-function both” to as .the Although at 1053. both S.Ct. forms of terms, along pat- with structures in the ’837 equivalence require the district court to ex specification, ent’s for a determination of in- prosecution history part amine the of its fringement. judge The left the task of con- claims, construction of the under doctrine sidering prosecution history estoppel to the claim, equivalents, judge gives jury.2 jury Cybor’s found that Model properly construed to exclude disclaimed 1-10, pump literally infringed claims matter, subject then, jury and where 17-20, infringed that it claims appropriate, jury also instructs the on the equiva- and 16 under the doctrine range possible equivalents may that it or lents. It is unclear which combination of may prosecution history not consider due to components Cybor’s pump Model'5226 estoppel. jury 1-10,13-15, infringe found to claims interpreted 17-20. It have “second

III. REVIEW pumping way means” in such a that it found depicted in figure patent, As two of the Cybor’s pump either second or the combina- ante at 1452 [maj. opn], patent the ’837 dis- tion of pump its second and its external dual-stage pump. closes a It claims a first equivalent reservoir to be structures to those pumping pumps means that through fluid provided specification pat- of the ’837 filtering means “to” a pumping “second corresponding ent pumping to the “second It means.” also claims a “means to enable Likewise, jury may means.” have inter- pumping said second means to collect and/or preted “means pump- to enable said second both,” fluid, dispense the at rates or dur- way means” in such a that it found either ing periods independent that are oper- Cybor’s external reservoir or the combina- ation pumping of the first means. As a tion of its external reservoir and its second structure, result pump of this described pump equivalent to be structures to those patent in the ’837 is able accumulate fluid provided specification pat- of the ’837 dispense, dispense for later fluid immediate- ent corresponding to the “means to enable ly, partially partially accumulate and dis- total, pumping said second means.” In pense precise there fluid measurements possible are five precise preferred combinations of claim term times. The embodiment interpretations paragraph describes a second means where 112(6) pump equivalents dispenses collects and that would have fluid led the jury from its own infringement internal reservoir. to its verdict. Although having juiy legal appeal: prose- make a determina- conclusion that we did on that the - during tion of the effect of statements made history Cybor’s does not exclude external cution error, prosecution alone this jury’s equiva- reservoir from the consideration infringement, error harmless because to find 112(6). paragraph lents under legal must have arrived at the same judg- expressed, regarding disputed its motion for sumed or

Cybor earlier renewed pursuant terms, to Rule as a matter of law long judge ment and so as the later 50(b) pursuant to Rule 59 for a new trial and jury’s evaluates and sustains the factual find- Procedure, on Rules of Civil of the Federal ings. juror no reasonable could find the basis that patent 1 of Claim the ’837 contains three patent. The pump infringes its the ’837 that disputed representative limitations and is of motion, finding the the “that court denied used, they how these limitations are where infringement supported by jury’s verdict appear throughout the 20 asserted claims: jury were the evidence ... the instructions filtering dispensing a device for and against not the proper and the verdict was manner, precisely in a fluid controlled contrary weight of the evidence or. clear combination of: Cybor instructions.” moved for recon- sideration, means; arguing that this court’s then re- pumping first Markman, cently issued pumping second means fluid commu- judge, required that the and means; pumping nication with said first jury, interpret all the claims. The not the motion entered district court denied filtering means between said first and judgment, Cybor appealed. from which final means, pumping whereby second said Cybor argues that had the dis- appeal, On pumping pumps first means the fluid properly analyzed prosecution trict court through filtering said means to said sec- history patent, it have the ’837 would means; pumping ond Cybor’s excluded reservoir structures like in which first each said and second equivalent from consideration as an under pumping means includes surfaces that con- 112(6). paragraph Cybor argues further fluid, being tact the said surfaces of mate- judge jury not would have instructed the non-contaminating rials that to indus- determining to consider its reservoir when high trial which are viscous fluids and/or Cybor’s pump whether second has the same shear; purity sensitive to molecular and/or equivalent or an structure as the structure patent’s specification portions of the ’837 comprising, means enable said second corresponding pumping to the second means. pumping dispense means to collect reservoir, and/or Cybor argues Without its that its both, fluid, during periods rate or pump infringe second cannot the “second limitation, operation, indepen- or both pumping the “or which are means” both” limitation, periods operation, functional or the filter means “to” rates or dent of pumping Cybor both, means limitation. respectively, pumping said first argues judge also that the district erred means. failing identify corresponding struc- patent, (emphasis ‘837 col. lines 45-61 specification, permitting tures in the and in added). formatting specification of the’ judge to consider the effect statements further the “second describes prosecution during patent. made of the ’837 having tubing means” as that con- prop- responds FAS that the district court pump to incremental nects the the second erly rejected Cybor’s argu- considered and means, 49-52, pump col. lines advancement prosecution history ment about diaphragm pump, inside the second col. patent, properly it construed the ’837 separate passage inlet lines and a claims, necessary properly and that passage, outlet col. lines 10-20. along with relevant corre- submitted them prosecution, During the inventors further sponding structures —as described scope by following making limited the specification jury for determination —to rejection art prior statements overcome infringement. argues further FAS unpatentable that the claimed invention was obliged/ either al., No. over Storkebaum et U.S. Patent Markman, com- before or after to submit 4,749,476. long plete claim constructions to the so Additionally, specifically pro- Storkebaum judge’s ultimate claim construction is collecting supported by jury’s findings, pre- separate container 12 for factual vides Obviously, permeate. Pumping the Storkebaum A. “Second Means” teach the collection of fluid does not- “Means Enable Said Second means____ pumping Storkebaum second Pumping Means” permeate collecting container discloses a limitations, disputed As to these two each conveying separate 12 that from the claims, independent except of the for claim pump Nothing in Storkebaum dis- means,” pumping term uses the “second closes or makes obvious the claimed inven- interpreted means-plus- which the court tion, precise and flexible control nor the language function as: “a structure identical by provided pump the second means of specification to the structure in the disclosed Claim 1. equivalent of the or the of that struc- Given the nature and function of the Storkeb- performs ture the function of which a fluid container, aum these statements were made aceumulator/dispense pump.” The district - prior the distinguish the invention over interpreted court also the term “means to They possible interpretation the art. confine means,” pumping enable said second which paragraph of terms in the claims under appears independent 112(6) each of the claims they may prevent FAS’s desired and except means-plus- claims equivalents. use of the doctrine War- — ner-Jenkinson, language, function “a U.S. at- n. as: structure identical However, S.Ct. at 1051 n. 7. in this case the specification to the structure disclosed in the possible equivalents limitation of extends thereof, patent, equivalent or the necessary distinguish so far as was which allows the pumping second means to aspects pumping invention’s “second [accumulate, dispense, partially collect means” from external contain- Storkebaum’s dispense during peri- fluid at rates and er. The statements do not that the require independent ods first pumping judge provide jury district with more means].” specific interpretations of claim terms be- Cybor argues means-plus-func- that these cause the inventors disclaimed the use of a tion elements- should be limited to the exact separate, physically unattached reservoir structures disclosed in the claims and the pumping that cannot achieve differential specification However, patent. of the' ’837 pumps by two accumulat- rates between the 112(6) paragraph permits the disclosure of per- fluid in a reservoir —the function specific specification, structures in the with- by patent’s formed the ’837 “means to enable limiting protection out to the disclosed struc- pumping said second means.” ¶ (“[S]uch 112(6) tures. See U.S.C. claims separate Storkebaum’s container collects shall be construed to cover corresponding fluid; permeate designed and vents the it is materials, structure, or acts described in the part conveying pump big feed a that is of a specification thereto.”); and equivalents loop, dispensing not a fluid device. circulation D.M.I., USPQ 755 F.2d at at 238. Because the never inventors disclaimed Cybor is correct that the reservoir and the external reservoir that accumulates fluid to pump in dual-stage pump second its are not permit pumping different rates and because identical to the structure disclosed in the 112(6) equivalence paragraph under is a specification patent; they of the ’837 contain fact, properly the district court structure, a valve unlike the disclosed if permitted jury to consider the structure reservoir, uncoupled from the attached Cybor’s possible external reservoir as a pump permit partial does not accumula- 112(6), equivalent, paragraph under struc- partial dispensing tion and of fluid as con- patent’s specification tures in the ’837 templated by through” the term “flow pumping define the “second means” and the However, patent. explained ’837 “means to pumping enable the second above, prosecution history does not re- proper means.” It was also for the district quire uncouple district court to valve permit Cybor’s court to to consider separate the reservoir from the second measuring substantiality reservoir in pump submitting before the terms “second differences between its device and the inven- pumping tion patent, claimed the ’837 means” and “means to enable said under equivalents. doctrine of jury. second means” preferred arguments during embodiment should limited made patent’s ’837 pump, prosecution patent. Ordinarily, inside shows the reservoir restriction, jury’s infringement permits nothing requires such a verdict of us to but presume specification should not be the existence of factual limitations necessary v. Ad- to that verdict. But into the claims. See we are no read Constant Micro-Devices, Inc., 1560, way presume findings 848 F.2d entitled to factual vanced (Fed.Cir. 1057, rely infringement even to on the verdict of 1988). Finally, go a would jury, judge such restriction where neither the nor the on a against weight testimony law, clear of submit- judgment motion for as a of matter witnesses, Clark, by expert who upon ted FAS’s articulated a construction of the claims qualified was as one skilled the art of fluid findings premised. which the As ex- dynamics, Snodgrass above, and Gibson. plained possible there are five combi- interpretations nations of claim term involving “As all cases assertions of 112(6) findings of paragraph equivalents that patentee equivalency, wherein the seeks to jury infringement could have led the to its by not apply its claims to structures disclosed light possibilities, verdict. it is patentee, required the court is to exer- imagine to difficult how the court can affirm Instruments, judgment.” Texas Inc. v. cise jury’s finding infringement upon based Comm’n, Int’l. Trade 846 F.2d United States construction, its own de novo claim which (Fed.Cir. 1886, merely presumes a claim construction 1988). Here, its the district court exercised district churt and that admits of no deference judgment, partial, though legally made a suf- findings of fact. limitations, ficient of these jury presented them to the for resolution allowing The effect of such a combination disputes way determining on the to factual presumptions in deny this case has been to 112(6). equivalents paragraph under Based Cybor meaningful anything review more interpretations jury’s on these and the ver- judge’s apply than the district decision not to dict, presume3 jury we that the found that history prosecution estoppel, since it was the Cybor’s the combination of one of Model 5016 only legal determination that can be located pumps it uses in with external reservoir presumptions. surpris- outside of those Not pump Model 5226 created a structural its ingly, Cybor this is the decision contests equivalent pumpiing to the “second means” strenuously appeal. most The effect has pumping the “means to enable said second presume that also been to allow this court to means” claimed in the ’837 and de- claim it made the same construction as the specification paragraph scribed under jury, articulating much its without so as own 112(6). have not been shown Because we n construction of these two claim terms, jury that the lacked substantial evidence to jury’s infringement presume then to that the support finding equivalents this or in- Penultimately, Cybor finding is still valid. is fringement, we must affirm. ability with little more to make left than

However, presumptions interpreta- if claim as to our claim the court is correct that own any it purely solely is a tions in motion file for reconsider- construction message appeal, de novo on it ation. still is the the court is of law be reviewed Worse judgment infringe- sending to district courts: we will affirm a could not affirm the finding infringement long as as the district Infringement ment. was determined this by jury articulating its construction of case the same time that court avoids coincidentally by resolving the claims—which leaves us asked to construe these claims disputes factual about their and to free to arrive at our own constructions —and presume jury that the used scope long whether the of these claims as as we can determine designed clearly Findings presumed they interrogatories of fact are where reveal more interrogato- necessary support jury's findings he it made. Absent such would verdict. ries, presumes Corp. Computervision Corp., the law the existence Perkin-Elmer (Fed.Cir. jury necessary USPQ support the verdict reached.”); 1984) (“To Dynamics, also Railroad Inc. v. facilitate on a motion for see review USPQ [judgment appeal, and on it is A. Stucki law] as matter of (Fed.Cir.1984). special preferred jury provided to arrive at finding our constructions of not consider its external reservoir when it infringement. determines whether the Model 5226 dual- stage pump equivalents contains structural

B. “To” each of the relevant limitations disclosed disputed patent. prosecution The of these three the ’837 Given the histo- limitations, “pumps through fluid filter- ry analysis jury’s presumed said finding and the means,” means to said second Cybor’s pump reservoir and second con- one that the district court did equivalents tain of all the limitations to the analyze part means-plus-function of a limi- “means to enable said second pumping Cybor argued tation. that the fluid has to be means,” Cybor’s argument cannot stand. pumped directly pump. to the second FAS upon had substantial evidence enough maintains that it is that the fluid Cybor’s which to find reservoir and sec- merely pump. reaches the second The dis- collect, pump together ond dispense, can interpreted trict court the term “to” as fluid, dispense both finding collect and so its pumping “towards and with a destination of’ infringement is also sufficient. pump the second left the determination infringement jury. pros- Absent its IV. JUDGMENT AAS MATTER history estoppel argument, ecution there re- OF LAW Cybor’s interpretation mains little to of this presented claim limitation. FAS sufficient Finally, Cybor Markman, argues that 52 expert testimony from Gibson and Clark that 967, 1321, USPQ2d requires F.3d 34 that the merely pumped the fluid must “ultimate- judge determine meaning of the claim ly” pumping to the “second means.” This However, before submitting jury. it to the expert evidence is consistent with the testi- opinion judge said must deter- mony Snodgrass and Gibson that the “to” claim, mine meaning of a but that requires only designed limitation or dedi- meaning need not be established before the pathway cated pumping between the two Markman, jury. claims are submitted to the means, Cybor’s possesses. which device Be- USPQ2d F.3d at (pro- at 1331 experts cause all were consistent their nouncing meaning of a “ordinarily claim testimony meaning about the of terms to one accomplished can be by the in framing art, skilled there was no occasion here charge jury, its but also be done for the court dispute to resolve a factual over dispositive the context of motions such as of a term en route to their law.”) seeking those judgment as a matter of Moreover, interpretation. because the inter- course, waiting, The risk of is that pretation of this claim limitation describes jury’s infringement deliberative efforts on Cybor’s dual-stage Model pump, re- may be if rendered useless the instruction gardless of whether or not the reservoir is improper and the affected factual dis- part means, pumping the second no rea- pute Here, was material to the verdict. this juror sonable could use this as a basis for happens only under the court’s standard of finding noninfringement, agree and I we can Moreover, given review. in- nature and aspect affirm this judg- of the district court’s disputed terrelatedness of these limitations ment. and the underlying questions factual —wheth-

C. “Or Both” er Cybor’s the combination of pump second 112(6) paragraph and its reservoir equiv- limitation, disputed The third “or both” is alent pumping to the “second means” or the means-plus-function contained within lan- “means to enable said pumping guage, it describes a function of the “means means” —it is difficult to see how means,” enable second and it court could have jury, better instructed the Cybor’s must be a function of device if the absent the use of detailed and alternative fact equivalence finder is to consider under 112(6). Therefore, special verdicts. I paragraph Cybor see no revers- argues solely that ible error in inventor of the ’837 the district court’s disclaimed limited own, by interpretations external such Cybor’s reservoirs as its distin- or its denial mo- guishing Storkebaum. Thus the judgment should tion for as a matter of law. 388,116 “mongrel practice”); S.Ct. at from id.

RADER, Judge, dissenting Circuit interpretation (suggesting that claim on claim pronouncements concurring pristine legal opinion, somewhere between banc “‘falls in the én ” en banc joining part single (quot IV of the fact’ judgment, and standard and a historical Fenton, 104, 114, opinion.. ing Miller (1985))); 88 L.Ed.2d 405 S.Ct. case, re- court chooses this The en banc (“notwithstand id at at 1396 S.Ct. estop- prosecution history solvable under evidentiary under [claim construction’s] doctrine, no defer- pel to state that accords Nonetheless, pinnings”). in the time since central role to the district court’s ence II, repeatedly Markman court has ex this interpretation. namely claim patent litigation, authority tolled its own to “review the issue concur- Yet, court’s unanimous based on this interpretation independently without of claim of re- judgment, the standard rence judge.” trial Exxon Chem. in this case. not affect the outcome does view. deference Patents, Corp., 64 Inc. v. Lubrizol F.3d really is Accordingly, ease obscures what this (Fed.Cir.1995) subject claim construction is at stake when (Lubrizol) added); (emphasis see also revision.1 de novo review Ltd, Corp. v. BP Chem. Hoechst Celanese I, this court en banc declared Markman (Fed. 1126, 1128 solely with interpretation resides that claim — Cir.), -, 117 S.Ct. cert. U.S. denied Supreme agreed. Court judge. The (1996). 275, Indeed, 198 at one 136 L.Ed.2d Instruments, Inc., v. Markman Westview requires 'point, this court noted that its law 1384, 1387, 370, 371-73, 116 S.Ct. U.S. “independent of the construc determination II). (1996) (.Markman By 134 L.Ed.2d claims, law, tion of the as a matter of unen complex technologi removing lay juries from by process.” Corp. Festo cumbered the trial decisions, im promised decisions to cal these Co., Kogyo v. Kinzoku Kabushiki Shoketsu uniformity predictability and prove the 863, 1161, 857, II, 517 U.S. at law. See Markman (Fed.Cir.1995), vacated and remanded on 390-91, 116 at 1395-96. S.Ct. — 1240, U.S.-, grounds, other S.Ct. of the Seventh To evade the strictures (1997). by 137 L.Ed.2d 323 Unencumbered Amendment, necessarily I rea- Markman process? Far from an encum the trial purely is a soned that claim construction brance, Supreme suggests that the Court law, pure question of law. As a matter “main event.” trial should be the Wain subject plenary to claim construction became 72, 90, wright Sykes, 433 97 S.Ct. v. U.S. appellate jury Because involvement review. (1977). 53 L.Ed.2d 594 I, of Markman the Su- remained the focus jury Markman Because issues dominated appellate re- preme Court did not address I, briefing yet even to receive this court has of claim construction. Instead Su- view proper standard of argument oral on the and claim preme repeatedly Court intimated that construction. review for a trial court’s claim purely legal matter. construction was not a court relies on its earlier en II, 377-79, Nonetheless this See, e.g., Markman 517 U.S. at decision, I, to Markman 52 F.3d (calling banc at 1389-91 the construction 116 S.Ct. purely question receipt make claim construction following of a term of art of evidence (Fed.Cir.1997), fact, USPQ2d 1269 case the district court submitted this to 1. In for mean- jury v. have a more suitable choice this court decided Markman West been before Instruments, appel- ingful of the issue of en banc consideration view (Fed.Cir. 1995) (Markman claim construction. The dis- late deference in Thus, by applying I). jury decided Fromson court’s instructions trict court claims, regime. court only partially I The Fromson district and the en Markman construed relies, must, upon upon evidence and opinion what also relied extrinsic banc as it interpret scientific/technologic jury’s fact to presumes con must have been the ordinary deliberately to one of skill of claim terms struction. Nor did the district court (over rely upon expert testimony art at the time of the invention accept to and under Thus, terms, twenty years ago). facts of Fromson interpret the claim central stand might stan- problems, have better illustrated how different I. Heedless of these issue in Markman ap- direct the outcome on dards of review can this case for en banc this court has selected Plates, Inc., peal. Printing v. review. Fromson Anitec law, subject independent appellate expert review fects the trial court’s discretion to use deference to dr encumbrance testimony. sophisti- without When confronted with rejection my eyes, To this process. trial technology, cated district court often judges process “main event” will the trial as the testimony experts help seek from them- undermine, destroy, if not the values of cer- interpret understand the claim. Under predictability sought Markman tainty guise setting standards for claim con- struction, 1. court tri- experienced this instructs judges they may experts al to un- use I. derstand, but interpret, the claim proper of the standard of logic, terms. matter of As this instruction topic legal seems an esoteric of inter- review grasp. is difficult What is the distinction professors to law est trial judge’s understanding between a however, cases, In judges. most the review judge’s a trial claims and greatly influences both the trial standard jury? judges claims Don’t instruct preside process who judges over the trial in accordance with their understand- patent practitioners who must advise clients practice, of the claims? this how does plans to accommodate their business to an lofty appellate logic court’s work? As this legal regime. uncertain acknowledges, a trial court must often experts complex resort to learn new tech- vantage point judges, trial From See, I, e.g., I Markman Markman nologies. many dictates from 52 F.3d at deviations procedural litigation.2 happens learning normal when course for What influ- however, deviation, Perhaps the central af- judge’s interpretation ences a trial 1995) following procedur- claims); incomplete (interpreting Corp. 2. The list of Loral Fairchild required by (E.D.N.Y. F.Supp. I: al deviations Markman Victor 80-81 1996) (preventing plaintiff theory changing from trials, Multiple problem hearings 1. I: If are infringement response interpreta- in of tion). to claim claims, necessary interpret complex to the trial must set aside time in its crowded docket 5. evidence The new dilemma: As a of result proceeding interpret for one to claims and a perhaps unexpected the new and somewhat in- (potentially jury) with a to determine terpretation, parties the scramble to create infringement and other issues. acquire infringement new evidence for their ar- interpretation, problem Fearing 2. Claim I: guments. may opportunity supple- not that it receive the to learning problem: 6. The curve Like all human expert reports discovery reopen ment or after the éndeavors, interpretation learning pro- claim is a interpretation, judge’s party argues a alter- often native, judge every cess. The trial to makes effort state claim construction from the theories out- precise scope the of the claims the at the close of litigation. set of This extends the time and ex- often, proceeding, initial but with the additional pense interpretation proceedings. of the claim trial, learning during infringement the realizes summary pracr judgments: 3. Bias toward In interpretation terms, that the initial was'too broad proceedings tical Markman I directs the respects. judge too narrow in some The then summary judgment toward on1the central issue changing faces the dilemma the rules the litigation potentially premature stage of at a the of game. middle of the Prematurely development. addressing of issue issues, judge judge's 7. as a level, The trial issue: With even at the can result in claim expensive repetition tures, central to the issues of in- of effort. See Ven CVI/Beta LP, 1146, 1157-58, fringement,’trial try exploit counsel'will Inc. v. to Tura 112 F.3d 7, 1577, 1585, judge’s USPQ2d n. 42 stature to show that the 1160 1587 n. 7 (Fed.Cir.1997) (finding court is on their side. error construc in claim trials, problem appeal), Multiple that had been II: In words of tion affirmed in an earlier - denied, -, 1039, Judge United cert. L.Ed.2d-(1998). -U.S. 118 S.Ct. States District Court Roderick spite ruling judge’s "[I]n McKelvie: of a trial on' claim, interpretation, problem meaning disputed 4. Claim As II: soon as should words in interpretation, three-judge panel the trial court issúes a claim both of -the dis- Federal Circuit original agree, sides often seek to shift their claim inter- entire case could be remanded pretations Thus, judge's to accommodate the views. interpretation].” [a] [claim retrial on different Am., parties expert reports seek to Libbey-Owens- revise North Atochem Inc. v. Elf Co., 844, 857, reopen discovery judge’s F.Supp. USPQ2d to account for the inter- 894 Ford 37 pretation. 1065, (D.Del.1995). maneuvering procedural This to leads 1075 surprise- judges over battles motions for additional can Trial often address each prepare to management, time for trial. See Loral Fairchild above with careful case at the but Co., (E.D.N.Y. Corp. v. F.Supp. Victor expending 906 798 cost of scarce trial court resources.

1475 law, engaged as a matter of the court has judges supposed to Are trial claim terms? interpreta- making reasons for their disguise weighing the real evidence and credibili- determinations____ perverse incentive to will this tion? How ty But when the Fed- appellate review? improve “hide the ball” Appeals eral states that Circuit Court something the trial court not do does analysis, the en bane legal a matter of As per- must the trial court does and do equally judges to trial court’s direction function, judicial objective form the court know- of claim inter justify. hard meaning sophistry ingly to discern enters a land and fiction. pretation is ordinary skill claim terms to one Indus., LP, Aerospace, Lucas Ltd. v. Unison art at the time of invention. See Multiform 329, 7, USPQ2d F.Supp. 333-34 n. Ltd., Desiccants, Medzam, Inc. v. 1235, (D.Del.1995); 1239 n. 7 see also Elf (Fed.Cir. 1429, USPQ2d Am., Libbey-Owens- Atochem North Inc. v. 1998) (“It ordinary person of skill is the 844, 857, F.Supp. USPQ2d Ford eyes through of the invention whose the field (D.Del.1995); In re Mahurkar construed.”). de What then the claims are Hemodialysis Double Lumen Catheter Pat testimony'of one the relevance of feats Litigation, F.Supp. ent skill in art at the time of invention? (N.D.Ill.1993) (“[Jjudges testimony hot must Of course this relevant pretend nominally ‘legal’ that all should contempo attempt trump conflict with or without reference to issues be resolved patent from the raneous intrinsic evidence facts____ judge may clear to a What seems itself, Corp. v. Con see Vitronics document art].”). [one read otherwise to skilled ceptronic, (Fed.Cir.1996), but 1576-77 appellate judges poised trial and II. both Moreover, by assigning that abuse. halt standpoint, patent practitioner’s From the judge, Markman interpretation to the assertion of its unfet- this court’s enthusiastic major already source of II has corrected potential to authority review has the tered experts, namely their abili problem with I. the benefits of Markman Mark- undercut lay jurors strength ty with the to influence supply early potentially promised man I strength than the of their resumes rather certainty about event, reasoning. any it seems a their turn, certainty, prompt would claim. This bar those of skill in the art contradiction to most, patent early many, if not settlement a search for at the time of invention from meaning of parties the know the suits. Once in the meaning of terms to one of skill the claims, effect, they predict with some relia- the can the invention. In art at the time of judgment, opinion bility banc has sub silentio rede the likelihood of a favorable the en inquiry claim construction as “how infringement, fined the of the factor in the economies lawyer judge interpret the term.” would costs at a settlement to save the and arrive promised pro- I litigation.3 Markman of already expressed have District courts pro- early in the trial court vide this benefit frustration with the strictures of Mark- their provide under the Mark- cess. To fairness I:man provide regime, judges trial would man I experts testify differently as to two When expense the of interpretations claim before term, meaning of a technical and the the would then be one, other, practitioners trial. Patent view of the court embraces the knowledge probable out- patent claim armed construing neither with while question. rough poses interesting Be- the calculus model 3. Three variables affect settlement litigation invariably the probability exceed party litigation: p, of cause the costs of each the of settlement, J, why do not all cases settle? obtaining damages; expected costs of plaintiff the the c, "[Ujncertainty Judge Posner answers: judgment plaintiff; the Chief value of a for the Posner, key rate----” to outcome is the to the settlement litigation. Richard A. The cost of See uncertainty party to Challenge This leads each 89-94 Id. at 90. Federal Courts: and Reform c, prevailing. (1996). plaintiff Accord- p (pj) x will overestimate its chance J exceeds then If - party assign ingly, different values plaintiff pj If the each will The values the case at c. sue. variables, thereby notably p, assigned diminish- agrees to the most defendant on the values variables, pj the likelihood of will cost him + c. This settlement. the suit litigating from litigation and could facilitate the focus shifts the correct come of the preserving ways claim construction to settlement. compel uncertainty, appeal, reversal on plan in problem The with this its cost, only litigation and duration of law, implementation question as a because Thus, increase. the en banc de novo court’s subject interpretation to free review regime purpose promise of belies the Circuit, by appellate court. The Federal Markman I. statistics, according to own official 1997 its part in or in 53% of the cases reversed whole profile appeals high have illustrat- Several (27% reversed; fully from district courts 26% problem by ed the created the Federal Cir- reversed-in-part). figure Granted this deals Lubrizol, high cuit’s reversal rate. In many all issues in cases with issues. and J.T. Eaton & v. Atlantic Co. Nonetheless, plena- study one shows 1563, USPQ2d & Paste Glue reversal, ry produced has standard of review (Fed.Cir.1997), this court re- part, whole or of almost 40% of all claim jected judge’s not the trial claim read- 7.4 A constructions since Markman reversal ing, readings by but also the both advocated range reverses more rate this than parties readings at trial and the advocated courts; work of numerous trial it also re- fact, Eaton, experts all in the trial. In fact, I. In verses the benefits Markman interpreta- Federal Circuit did not base its rate, 50%, hovering near is the this reversal specification totality tion on the or the possible. worst Even rate that was much prosecution history, but instead found its higher provide greater certainty. would meaning excerpt in a brief from the affidavit Instead, regime I the current Markman single expert of a witness at of a the end early means that the trial court’s claim inter- lengthy prosecution. F.3d at all, pretation provides early certainty no parties If might succeed in con- only opens bidding. but vincing the Federal Circuit to reverse an (and parties a claim is not certain are not argument entire trial result with an never settle) prepared nearly step until the last presented to the trial court or with a brief process Court —decision excerpt pages prosecu- from hundreds of Appeals get for the Federal Circuit. To court), (again presented tion to the trial interpretation, parties go certain claim must they would be wise to settle after a trial past proceed- I the district court’s Markman reading court’s of the claims? ing, past entirety discovery, past merits, past post on the trial trial entire. point One other case makes even more motions, past briefing argument Ventures, persuasively. In Inc. v. CVI/Beta past every step Federal Circuit —indeed LP, 1146, USPQ2d Tura litigation, except the entire course of federal (Fed.Cir.1997) (Tura), the Federal Circuit Supreme implementation, Court review. reversed its own earlier claim interpretations a de novo of claim has review as a of law when defendant and postponed point certainty to the end of stage proceedings changed. of the On a litigation process, point, at which of preliminary injunction motion for a in an course, every anyway. outcome is certain action, infringement Maryland district terms, interpreted elasticity practical implementation court 3% limitation this perverse eyeglass in a claim for record has other effects. Trial at- flexible frames. On torneys appeal must much of their trial the Federal devote strat- Circuit reviewed this egy positioning claim question themselves for the “end- as a of and law game” appeal.. nonprecedential on As in a opinion. affirmed construction —claim figure survey every patent expressly 4. This based on of 141 cases reviewed claim construction Appeals decision rendered for the decisions, Court Among issues. these 141 this court (the April Federal Circuit between 5 date reversed, part, in whole 54 or of all 38.3% decided) Markman I was and November 1997. respect claim constructions. With to the district cases, patent originating A total of -246 cases, and Court of Federal Claims court the rate Appeals Board of Patent and Interferences of reversal of claim constructions is 47 out of 126 courts, (BPAI), the district and the Court of Fed- or 37.3%. Claims, cases, eral were Of the 246 evaluated. Ventures, at 116 S.Ct. at Optical struction. U.S. Inc. v. Custom CVI/Beta (Fed.Cir.1996) Therefore, Frames, Inc., pursued the Court a func- 1996WL Tura, 112 F.3d at see also (nonpreeedential); inquiry tional whether determine Understanding that the law must 1160 n. 7. judge complex- could best balance the to case or from circum- change from case ities of claim construction. See id. A similar circumstance, a York district New stance to inquiry might clarify functional best the roles in- claim applied the Federal Circuit’s court appellate during of the trial and benches separate infringement ac- in a terpretation interpretation. claim trial, patent. After involving the same tion Supreme provided Court has some This time the Fed- appealed. the defendant guidelines approach. a functional such court’s the district eral Circuit reversed appellate The Court counsels courts to defer Tura, 112 at interpretation. See claim appears that court is “when it (“We court did conclude that district positioned’ appellate ‘better than the court to construction.”) (emphasis in its claim err probing the issue in or that decide added). Although this court referred to the appellate scrutiny will not contribute to the “error,” court’s the Feder- New York district clarity legal Regina doctrine.” Salve Col itself. in fact reversed al Circuit had Russell, 225, 233, lege v. 111 S.Ct. response to the potential trial court One (1991). 1217, 1222, 113 L.Ed.2d 190 At an the issuance of problem might be CVI/Beta point, other the Court cautions: re “[T]he a matter of claim constructions as “tentative” viewing appeals attitude that a court of takes Ma International Communication law. See de toward district decision should Co., Ltd., terials, Inc. v. Ricoh pend upon respective ‘the institutional advan (Fed.Cir.1997). This re ” course, tages appellate of trial courts.’ First frustrate the sponse, of would further con Options Chicago, Kaplan, to receive a certain claim Inc. v. parties’ desire U.S. ; early possible. 1920, 1926, as as struction 115 S.Ct. L.Ed.2d (1995) Regina, 499 (quoting Salve U.S. if Circuit’s read- Regardless, the Federál 1222). 233, 111 S.Ct. at vary can from one very same claim next, every patent litigant has appeal to the counsel, Applying general trial this appeal every action to the an incentive to potentially superior position judge enjoys a hopes, the statistics Federal Circuit engage interpretation. claim For eventually up hold will language complex case where the claim Even the Federal Cir- court will reverse. summarily dispose of specification do not questions of interpretations claim cuit’s issues, claim construction the trial court has “uniformity” are not certain. Is this the law acquire evaluate evidence that tools to Supreme' Court Markman outlined spend judges Trial can this court lacks. II? rereading reading and all hundreds of hours material, receiving tutorials kinds of source III. scientists, technology leading from formal- practitioners Because trial under- experts testing ly questioning technical overturning prospect the distinct stand understanding against that various their appeal, trial arena trial court results on experts, examining operation on site the stage of its luster as the center loses some invention, and principles of the claimed Instead the dispute resolution drama. deliberating over to the real center trial court becomes a ticket judges are not language. If district satisfied Appeals for the Federal stage, the Court they proofs proffered by parties, with the Supreme Taking a cue from the Circuit. may prepared to a record but are not bound Court, wisely take a this court would more em- compel presentations or even additional setting of approach functional to a standard court-appointed expert. ploy their own construction. review for claim of these ad- appellate An court has none II, Supreme the Court noted Markman depart record vantages. It cannot from the history precedent provided that neither nor properly mar- proceedings. To of the trial jury of the “clear answers” about role resources, must bench legal nature of claim con- shal its and the factual or judicial process. page limits in oral extreme end of the This time and enforce strict a presentations.5 Moreover delay disrupts and written both the orderliness of trials convey can never all written record sterile practitioners’ hopes for more efficient intangibles of the decisional the nuances and and earlier claim constructions. The Su- consideration of process. Indeed a careful preme jury uncertainty Court removed the advantages of the district the institutional and, by recognizing with its decision a factual court’s counsel deference. This court would component interpretation, provided in claim interpretation response that claim categorical way accomplish much of for this factual assessments does ad- involves no By early goals. according its some defer- analysis appel- of trial and vance a functional appropriate, ence where this court can re- construction. As a matter late roles in claim prominence in store the trial court’s (so speak), construction re- of fact claim interpretation bring again claim function and usage of custom and in quires assessment certainty stage more at an earlier art, during of relevant assessment events judicial process. Applying Supreme of ordi- prosecution, assessment of level reasoning proceedings Court’s for habeas art, un- nary skill in the assessment of the construction, “adoption claim rule of [a derstanding of skilled artisans at the time of appropriate ... the sa- will have deference] just compo- invention —to name a few factual lutary making effect of the [district court’s] complex process of claim inter- nents of the event,’ trial on the ‘main merits the so . analysis functional pretation. A careful speak, ‘tryout than a on the for rather road’ claim counsels deference district court [appeal what will later be the determinative interpretations. Wainwright to the Federal Circuit].” IV. Sykes, 433 U.S. at 97 S.Ct. at 2508. This turn, Supreme certainty, in The Court have would stimulate more set- offered path predicament. At out of this three making least tlements and efficient decision —the II, earlier, in times Markman as noted promise reasoning I. With this Markman component Court alluded to factual mind, in I from the respectfully dissent claim point At interpretation. no did Mark- pronouncements of the en appropriate man II standard of address judgment, banc in the opinion, concur this court review. Nonetheless misses the join only part opinion. IV the en banc .of opportunity improve certainty patent practice by giving appropriate deference to NEWMAN, Judge, PAULINE Circuit particularly interpretations, trial court claim Judge joins; with whom Chief MAYER complex If cases. this court accords more additional views. interpretations deference to trial court in the illustrates, perfection As this ease is elu cases, complex soon courts will sive the aftermath of the Federal Circuit’s provide certainty early the desired decision Markman v. Westview Instru process. point, At that Markman I will ful- ments, Inc., promise. fill patent its Administration of law (Fed.Cir.1995) (en banc), costly disputes aff'd, will move toward less 577, USPQ2d earlier settlements. S.Ct. L.Ed.2d (1996). expectation greater sta improve patent I Markman set out to law bility in application law—thus by removing administration uncertainties result, enhancing consistency in reducing the (the dispute process from the resolution chief results). litigation, reducing litiga cost of course, and indeed uncertainty, being jury by diminishing tion the uncertainties of Inadvertently reasoning I Markman postponed point certainty has trials —has not been well achieved.. necessary process present picture 5. These strictures contribute to the does not a fair perception complex untangling legal Federal Circuit’s of claim" construc- task of the knot of rules, necessary parties presented seemingly tion. these factual Pressured issues for trial. A mightily simple appeal before Federal Circuit strive to re- of claim issue construction entirely complexion duce their cases to a few issues controlled takes on an different in its passages specification prose- proper tiny few from the context as one facet of massive reasons, history. appeal corpus litigation. cution For these concern, although in occur- expectation A third rare between the shortfalls ofMost imple- rence, manner of reality great significance, from the for even one arise is of and authority for of our de novo claim mentation Circuit has deemed case wherein Federal principal I areas. interpretation. cite three by prior itself unconstrained its own inter- to the treatment first area relates The pretation finality of the same removes Although the district questions. certified every patent. encourages relitigation of and themselves, so- and courts have extended uniformity promise finality, The and flow- common, hearings” are “Markman called effect, of national is a ing from decisions by accompanied interlocu- this has not been by if stare promise failed we are not bound judge’s claim inter- tory review of the trial interpretation. decisis our own claim far Federal Circuit has thus pretation. The concern, flaws are of serious no less These Indeed, questions. certified declined all such making. They they are of our own because early question issue was the certified irremediable, although remedy may are not flow that could warning of the difficulties larger possess. require a we vision..than interpretation, for it premature claim from However, today’s opinion adds an- en banc petition from the apparent often procedures for in- other encumbrance to the finally correctly claims in- not be and could claims, inhibiting terpretation. of further frui- pat- beyond the terpreted without evidence expectation. of extrinsic Markman When the The absence tion of the ent documents. evidence, conflicting posi- of resolution litigation complex questions involve issues by tions, analysis findings and and of detailed technology, special effort is of science and interpretation claim judge, trial inhibited litiga- judicial process.1 In required of the Thus, question. instead of con- by certified patent disputes the nature of the tion dispositive re- ducting expected de novo considered, that is received and evidence view, question. The simply we declined the trial and func- balance between finality interpre- early to claim possibility of tions, evidentiary governing rules and materialized, with two unto- tation has not testimony experts, particu- are of opinion and first, consequences; ward importance. Today’s falls short lar decision unnecessary perhaps has had to conduct a in each of these areas. second, trial; issuance of a and the eventual evidentiary should and rules Procedural by interpretation the Federal Cir- new claim judicial weigh facilitating understand toward cuit, judgment, has appeal after final thereby reaching ing of the issues required a second trial of sometimes Federal Circuit rules correct result. Yet the conse- infringement. of these issue None factual today that it will not consider our insistence that quences comports with disavowing such court, expressly of the trial law, purely is a matter of court continues prior panels. actions trial, findings at and that it that it needs no disput findings of deny the need to make de novo the Federal Cir- will be decided “[By] us interpreting claims: facts when ed cuit. that the court ing certain extrinsic evidence disappointed expecta- The second area of helpful rejecting other evidence as finds unexpectedly from the crea- tions has flowed disputes route to unhelpful, resolving en interpretations tive de novo claim language meaning of claim pronouncing the cases. has issued a few Federal Circuit crediting certain evi ... court is not unpredictability in administration of This making factual over other evidence dence sporting patent claiming has added law findings.” Maj. Op. at 1454 evidentiary It has not re- element to our bench. Markman, 52 F.3d at (quoting appeal, appellants’ imaginations on leased 1331). that it The court states complexity to future surely it will add but findings of judge’s trial accepts the neither trials, attempt guard against lawyers fact, factual issues accepts that there are nor judicial imagination. Science, tion, judi- widespread allegations Carnegie Commission on 1. In 1993 manage system increasingly Technology, unable to and Government wrote: cial technology issues. adjudicate complex science ability to handle science- The courts’ 1993, p. ques- Report, recently March been called into rich cases has interpretation. accepting With one these stric- at 1331. Since claim witnesses, evidence, findings, rejecting and side’s on evidence and the other’s tures the far from clear how Federal Circuit validity is based on an assessment of would be interpre- to reach the correct claim proposes finding, some other criterion must the tation. basis for the The court never choice. has n be, except criterion stated what this could that By continuing the fiction there are no accepted “helpful,” that evidence should be interpretation, to be found in claim we facts question. an answer the begs that litigation pro- rather than ease the confound doubt, disputes Without factual arise cess. A fact also fresh view of and law would interpret must be in order to and .resolved placed ameliorate the constraints we have on normally claims. Such facts are resolved the presentation the extrinsic on the of evidence yet deny op- at we now ourselves the trial — interpretation.' litiga- issue of claim Patent portunity findings even to consider tion now with preliminary often starts maj. op. court. at (disavowing trial hearing interpret disputed claim opinion in a procedure Federal Circuit terms, produces early summary and an often whereby recognized the court the trial judgment, perhaps our path fostered ability to [expert] court’s ‘“trained evaluate1 question. foreclosure of the certified This testimony in relation to the overall structure preliminary dispositive can be of the ruling patent’ trial of the and the court’s ‘better dispute, scope for the claim often position expert’s pro- to ascertain whether infringe- decides can whether there be literal fully comports posed spec- definition with the my posi- ment. I Thus add concerns the ”). today ification and.claims’ The court not Circuit, reaffirmed, tion of the Federal here rejects opportunity only give normal strictly is of limited extrinsic evidence proceedings deference to the and availability in interpretation. claim evi- Such trial, rejects opportu- but also restrained, encouraged, dence should be not nity to consider them at all. summary if disposition is at hand. In Markman the en banc took the The value claim of extrinsic evidence in cases, position patent that in any unlike other interpretation surprising, pat- is not because law, disputed question area of the mean- per- ent written documents are and for ing, scope, usage technologic and of terms of invention, sons for field not fact, art is not a even of law judges. Judges un- larger need a fact, on underlying pure based but is law. derstanding technology, of the science or but However, Supreme has Court relieved us we also with help understanding need how fiction, by recognition of adherence to this its particular terms as used in the are component interpreta- of the factual of claim by persons in viewed the field of inven- Further, tion. the Court’s affirmation that Judge tion. As Sehwarzer observed: exclusively “is within the [issues context in and which science court,” province 517 U.S. at technology] widely, varies gener- arise but 1387, USPQ2d at S.Ct. did ally they They one share characteristic. judge along not shut out the trial with the ability challenge judges juries and jury. declining to affirm the Federal comprehend the evi- issues—-and the theory, Circuit’s opened Court fact/law dence —and to deal them in informed the door for retreat this from artificial con- effective, result, ways. they As a tend so, I urge struct. experience us to do complicate litigation, increase ex- shows unforeseen and undesired conse- pense delay, jeopardize quences flowing quality its rigidity. from Now judicial rigor that this longer necessary making. is decision no fact/law combat, for constitutional let us review these Center, Federal Judicial Manual Reference consequences accept this invitation to (1994). Evidence The Feder- Scientific procedures. advance our al ruling Circuit’s extrinsic evidence must be unless example, restricted there is a facial For in Markman the Federal ambiguity Circuit stated that it not a of the claim is an finding when accepted unnecessary one on potentially side’s evidence is and the other restraint useful rejected.- evidence is side’s -52 F.3d at evidence. See Daubert Merrell Dow Phar- court, maceuticals, deprives This disavowal the and the (“ (1993) parties, progress ‘If of the accumulated ex- 125 L.Ed.2d 469 and S.Ct. trial, scientific, technical, specialized perience the including findings or other of the of fact judge, appeal the of to will trier the trial and leaves us on with knowledge assist or to expurgated the determine and generally understand evidence record inferior issue, expert qualified as an Recognizing ap- in a witness fact basis of decision. our testify in of the form an pellate ... thereto is role to decide whether the claims ”) opinion (quoting Fed.R.Evid. correctly interpreted or otherwise.’ light were of all of 702). evidence, mysterious why the is we choose ap- to we will on self-censor what consider primary the source of informa- Of course peal. equally why It is this court obscure is concerning claimed invention the tion prohibit relying from on trial would itself But such documents patent documents. findings, choosing from court’s or between in persons knowledgeable directed to disputed expert positions. strongly I dis- field; expert and testimo- additional evidence agree majority’s of with view role rule, ny as their should be to evidence, extrinsic at trial and as considered exception. not the “extrinsic” evi- So-called appeal. on expert and evidence of witnesses dence—the exhibits, demonstrations, experimentation, contrast, return to the traditional any be like explanation and treated —should relationship trial/appellate sev- would achieve evidence, given other and received important It eral results. would rationalize weight appropriate. value Our broad as admissibility evi- relevant extrinsic such is an on resort to evidence constraint dence, appellate deference would be restored is enlightenment. It also unnecessary bar to disavowed, review instead authority into of the trial an incursion with rules. would be accordance The Joiner, Electric Co. court. See General processes appeal of both trial and ben- would — U.S.-,-, S.Ct. particularly important efit. This is because (1997) (decision court to of trial L.Ed.2d interpretation, in claim the evidence involved testimony is expert exclude re- admit or extrinsic, is often whether intrinsic or scienti- standard). viewed on abuse discretion technologic. fic or The evidence what respect to such The real issue with evi- works, is, invention how it what technical of admis- dence is not threshold persons words meant the field at some hold, sibility, appears but of as this court time, complexity. past can be of extreme weight, upon of the evidence and examination dispute is a as what a When there term conjunction the other evidence. with usage encompasses, or technical art means judge, These too are matters for trial is relevant and often indis- such evidence criteria of relevance and when the threshold foreclose, pensable. Why our court would Daubert, met, the evidence reliability are see of, path adducing and place obstacles appro- should and considered be received considering such evidence? credibility weight. It fol- priate to its encourage Surely the view is to better findings factual lows that the trial court’s judicial find- access to scientific evidence and respect evidence relevant ings beneficia- based thereon. ultimate treated, appeal, be should ry parties, be the for the courts would would court. any finding like other trial cor- restricted in search less quite discouraging to observe Thus it is I just cases. Thus rect and result Federal ruling this en banc wherein the Cir- must, respectfully, dissent from court’s prohibits considering the find- cuit itself from these rulings on issues. ings by the trial court. The of fact made prior majority opinion this court’s disavows

statement that district court’s “[t]he scientific/technological fact were material the term.”

to the issue of construction of

Case Details

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

Court Name: Court of Appeals for the Federal Circuit

Date Published: Mar 25, 1998

Citation: 138 F.3d 1448

Docket Number: 96-1286, 96-1287

Court Abbreviation: Fed. Cir.