Patents

Who Reads the Claim: Markman v. Westview Instruments and the Birth of the Markman Hearing

The Supreme Court held that construing a patent claim is a question for the judge, not the jury—reshaping how every patent case is tried.

February 10, 2025
A judge's bench with a gavel and patent documents under a desk lamp
Markman made the trial judge, not the jury, the authoritative reader of a patent's claims. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (No. 95-26), a unanimous Supreme Court answered a question that had unsettled patent litigation for years: when a patent claim’s words are disputed, who decides what they mean—the judge or the jury? Argued January 8, 1996, and decided April 23, 1996, the opinion by Justice Souter held that the construction of a patent, “including terms of art within its claim,” is exclusively a matter for the court. The decision gave its name to the procedure now used in virtually every patent case—the “Markman hearing”—and it remains the structural foundation on which all of modern claim construction sits.

At a glance

  • Court and date: Supreme Court of the United States, decided April 23, 1996; argued January 8, 1996.
  • Docket: No. 95-26 (on certiorari to the U.S. Court of Appeals for the Federal Circuit, which had ruled en banc below).
  • Technology: Herbert Markman’s patented system for tracking garments through the dry-cleaning process using bar codes to monitor “inventory” and generate receipts.
  • Disputed term: “inventory”—whether it reached the cash and invoice totals tracked by Westview’s device, or only the articles of clothing themselves.
  • Procedural twist: A jury found infringement, but the district court entered judgment as a matter of law for Westview after concluding its device could not track “inventory” as the claim used that term.
  • Holding: Claim construction is a question for the judge; the Seventh Amendment does not guarantee a jury’s interpretation of patent claims.

The Seventh Amendment question

Markman’s appeal pressed a constitutional argument with real force. The Seventh Amendment preserves the right to a jury trial “in Suits at common law,” and an infringement action is undeniably a legal claim for damages. If the meaning of “inventory” was the hinge on which infringement turned, why was that question stripped from the jury that had already found in Markman’s favor?

The Court’s answer proceeded in two steps. First, it asked whether there was a direct historical analogue from 1791—when the Amendment was adopted—showing that juries decided the meaning of patent terms. Finding no clear eighteenth-century practice that assigned claim interpretation to juries, the Court turned to its second, more functional inquiry: which actor is better positioned to perform the task, consistent with the Amendment’s purpose of preserving the substance of the common-law jury right.

That functional analysis is the heart of Markman. Construing a patent, the Court reasoned, is closer to interpreting a written instrument—a task judges have always performed—than to the credibility-weighing and fact-finding for which juries are indispensable. Although expert testimony may illuminate how a skilled artisan would understand a term, the ultimate question is the legal meaning of a public document that defines the boundaries of a property right. Judges, the Court observed, are better equipped by “training and discipline” to assign that meaning.

Uniformity as the decisive value

If the historical record was inconclusive and the functional case merely strong, what tipped the balance was the Court’s concern for uniformity. A patent is a single instrument that may be litigated many times against many defendants. If its claims meant one thing to a jury in one district and something else to a jury in another, the public-notice function of the patent would collapse. The Court expressly invoked the value of “intrajurisdictional certainty,” reasoning that treating construction as a legal question allows appellate review to settle a claim’s meaning once, with stare decisis lending stability across later disputes.

This rationale did more than allocate a task between two courtroom actors. It articulated a theory of what a patent claim is: a legal text whose scope should be fixed and knowable, not a fact to be re-found in every case. That conception—claims as public instruments demanding consistent interpretation—would echo a decade later in Phillips v. AWH Corp. and again in Teva Pharmaceuticals v. Sandoz, where the Court returned to the consequences of Markman’s allocation.

The procedure Markman created

Markman did not prescribe a particular procedure; it simply held that the judge decides. But the practical consequence was immediate and enormous. District courts developed the “Markman hearing”—a dedicated proceeding, often held before trial, in which the parties brief and argue the meaning of disputed claim terms and the judge issues a construction that governs the rest of the case.

The strategic gravity of that hearing is hard to overstate. Because infringement and validity both depend on what the claims mean, the court’s constructions frequently decide the case before a jury hears a word. A favorable construction can convert a contested infringement question into summary judgment; an adverse one can gut a damages theory or expose a claim to invalidity. Litigants now pour resources into claim-construction briefing, and the timing of the Markman ruling—early or late, before or after expert discovery—has itself become a contested case-management variable. The hearing the Court never named has become, for many patent suits, the main event.

Open questions

Markman settled the “who” but left the “how” and the “how reviewed” for later. The Court held that judges construe claims, but it did not specify what evidence they may consult, in what order, or with what weight—the questions the Federal Circuit would wrestle with in Phillips. Nor did it resolve the standard of appellate review. By treating construction as a legal question, Markman invited the inference that review should be de novo, which the Federal Circuit embraced in Cybor Corp. v. FAS Technologies. But because claim construction often rests on subsidiary factual determinations about how skilled artisans understand technical terms, that inference proved unstable—and the Supreme Court qualified it in Teva. Markman thus opened a two-decade conversation rather than closing one.

Implications

  • The judge is the authoritative reader. Claim meaning is decided by the court, and the parties must win the Markman hearing before they can reliably win the trial.
  • Front-load the dispute. Because constructions often dictate outcomes, claim-construction strategy belongs at the very start of a case, not after discovery closes.
  • Draft for a judicial audience. Patentees should prosecute claims and specifications knowing a judge—reading the intrinsic record as a legal text—will fix their scope.
  • Uniformity is a feature, not a side effect. The decision deliberately prizes consistent, reviewable meaning over case-by-case jury variation.
  • Procedure followed substance. The Markman hearing is a litigation institution the Court did not mandate but made inevitable.

Frequently asked questions

Did Markman eliminate the jury in patent cases? No. Juries still decide infringement, validity defenses that turn on facts, and damages. Markman removed only the interpretation of disputed claim terms from the jury and assigned it to the judge.

What is a “Markman hearing”? It is the pretrial (or sometimes mid-trial) proceeding in which the court hears argument on the meaning of disputed claim terms and issues binding constructions. The name comes directly from this case, though the Supreme Court did not prescribe the procedure itself.

Why did the Court think judges were better suited than juries? The Court reasoned that interpreting a written legal instrument is a traditional judicial function, that judges are better trained to handle technical patent documents, and—decisively—that uniform, reviewable constructions serve the patent system’s public-notice purpose better than variable jury verdicts.

Authorities and sources