Harvard Journal of Law & Technology Volume 11, Number 1 Fall 1997 UNIFYING MARKMAN AND WARNER-JENKINSON: A REVISED APPROACH TO THE DOCTRINE OF EQUIVALENTS William R. Zimmerman" TABLE OF CONTENTS I. INTRODUCTION .................................... 186 II. MARKMAN V. WESTVIEWINSTRUMENTS, INC. ............... 187 A. The Markman Deciston and the Supporting Precedent .. 187 1. The District Court ........................... 187 2. The Federal Circuit .......................... 188 3. The Supreme Court .......................... 195 B. Application of the Markman Framework ............. 196 1. The District Courts' Application of Markman ..... 196 2. The Federal Circuit's Application of Markman .... 204 C. Analysis of the Markman Decision and Subsequent Cases ................... ....................... 211 III. WARNER-JENKINSONCO., INC. ~'. HILTON DAVIS CO ..... .... 218 A. The Wamer-Jenkinson Decision and the Supporting Precedent ..................................... 218 1. The District Court ........................... 218 2. The Federal Circuit .......................... 219 3; The Supreme Court .......................... 228 B. Application of the Warner-Jenkinson Framework ...... 234 1. The District Courts' Application of Warner-Jenkinson ........................... 234 2. The Federai Circuit's Application of Warner-Jenkinson ... ........................ 238 C. Analysis of the Wamer-Jcnkinson Decision and Subsequent Cases ................................ 243 k * J.D., 1997, Harvard Law School. The Author is a clerk to Judge Alvin A. Schall, United States Court of Appeals for the Federal Circuit. The opinions expressed in this note are solely those of the Author and do not reflect the opinions of Judge Schall o:r the Federal Circuit. The Author gratefully acknowledges Professor Lloyd Weinreb, H~arvard Law School, for his contributions and support. 186 Harvard Journal of Law & Technology [Vol. 11 IV. INCONSISTENCIESBETWEEN THE MARKMANAND WARNER- JENKINSON FRAMEWORKS: THE ROLES OF JUDGE AND JURY . 253 V. A REVISED APPROACH TO THE DOCTRINE OF EQUIVALENTS . 259 VI. CONCLUSION ...................................... 267 I. INTRODUCTION Two recent patent decisions by the United States Supreme Court, addressing claim construction and the doctrine of equivalents, respec- tively, have the potential to reshape several facets of patent practice, especially patent prosecution and litigation. I In Markman v. Westview Instruments, Inc., 2 the Court held that construing the claims of a patent is a matter of law exclusively within the province of the court) In Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 4 the Court reaffirmed the vitality of the doctrine of equivalents and reformulated the method of decision for such casesJ The Court's decisions in these cases create divergent and inconsistent analyses for literal infringement and infringement under the doctrine of equivalents. By analyzing the decisions in these eases and the precedents on which they relied, the inconsistencies between inquiries of literal infringement and infringe- ment through the doctrine of equivalents become evident. A possible resolution of these problems involves a two-step reform. First, the courts must revise the Markman framework to allow a more uniform application at the district and appellate court levels. Second, the courts must also revise the doctrine of equivalents to create defined roles for the judge and jury similar to those in the literal infringement inquiry. This two-step process has the potential to remove the inconsistencies created by the Marlonan and Warner-Jenkinson decisions. I. See Thomas L. Creel, Proving Patent Infringement, 453 PLI/PAT311,315-16 (1996) (asserting that Markman and Warner-Jenkinson fundamentallychanged patent litigation by changing the standards for infringement and the method by which practitioners prove infringement);see also LawrenceM. Sung, Patent Law Decisions of the United States Court ofAppeals for the Federal Circuit, 45 AM. U. L. REV. 1529, 1534 (1996) (showing the pronounced effect .of Markman and Hilton Davis on patent practice). 2. II6S. Ct. 1384(1996). 3. See id. at 1389. 4. li7S. Ct. 1040(1997). 5. See id. at 1045. No. 1] Markman and Warner-Jenkinson 187 Part II reviews the Markman decision and the precedents used to support the decision; surveys the application of the Markman framework by both district courts and the United States Court of Appeals for the Federal Circuit, noting the various dilemmas facing these courts and litigants; and asserts the soundness of the Markman decision, while suggesting methods for alleviating the problems created by the current application of the Markman framework. Part III reviews the Warner- Jenkinson decision and the precedents used to support the decision; presents the application of the Warner-Jenkinson framework by both district courts and the United States Court of Appeals for the Federal Circuit; and assesses the Federal Circuit and Supreme Court decisions and the issues presented. Part IV presents the inconsistencies between the Markman and Warner-Jenkinson frameworks, and addresses the various policy considerations and the possible effects on patent practice crucial to any resolution of the divergence between these two decisions. Finally, Part V proposes a revised approach to the doctrine of equiva- lents designed to harmonize the inquiries used for literal infringement and infringement under the doctrine of equivalents. By making the doctrine of equivalents a matter of law for the judge, courts can reduce the confusion createdby the current system with less impact on patent practice than has resulted under the current Warner-Jenkinson frame- work. II. MARKMAN V. WESTVIEW INSTRUMENTS, INC. A. The Markrnan Decision and the Supporting Precedent 1. The District Court Herbert Markman and Positek, Inc. sued Westview Instruments, Inc. and Althon Enterprises, Inc. alleging literal infringement and infringe- ment under the doctrine of equivalents of United States Reissue Patent No. 33,054 for an inventory control device used by laundries and dry cleaners. 6 The court charged the jury with interpreting the meaning of the claims at issue, and the jury returned general interrogatories finding 6. The claimsat issue are containedin the districtcourt opinion. See Markmanv. Westview Instruments,Inc., 772 F. Supp. 1535, 1536 (E.D. Pa. 1991), aft'din bane, 52 F.3d 967 (Fed. Cir. 1995), aft'd, 116 S. CL 1384 (1996). The patent in suit was a reissue of U.S. Patent No. 4,550,246. See Markman, 52 F.3d at 971. The jury's claim constructionwas not explicit in the general interrogatoriesthey returned. 188 Harvard Journal of Law & Technology [Vol. 11 infringement under their claim construction. 7 On September 30, 1991, Judge Katz granted the defendants' motion for judgment as a matter of law ("JMOL"), finding that the accused device did not infringe Markman's patent either literally or equivalently. 8 The court also noted that "claim construction is a matter of law for the court. ''9 The court stated that a "mere dispute concerning the meaning of a term does not itself create a genuine issue of material fact. '')° The court concluded that plaintiffs' experts 1~ attempted to give unusual or novel meanings to several terms in the patent, t2 These meanings were contrary to the customary meanings of these terms and the "obvious meaning intended by the patentee, determined from the specifications, the drawings and the file histories of the original patent mid the patent-in-suit. ''13 2. The Federal Circuit Markman and Positek, Inc, appealed to the Federal Circuit. ~4 On November 15, 1993, the Federal Circuit ordered sua sponte that the appeal be reheard in bane, after a panel of that court had already heard oral argument. Is in an opinion by Chief Judge Archer, '6 the court affirmed the judgment of the district court, concluding that the interpreta- tion of patent claims, an objective inquiry, is a matter of law exclusively _)'or the court. ~7 7. See Markman, 52 F.3d. at 973. 8. See Markman, 772 F. Supp. at 1538. 9. Id. at 1536 (citation omitted). 10. ld. (quoting Beeton Dickinson & Co. v. C.IL Bard, Inc., 922 F.2d 792, 797 (Fed. Cir. 1990)). 11. Markman presented testimony from an expert in the technology, the inventor, and a patent expert. Both the inventor and the patent expert testified as to the meaning of the claim language. See Markman, 52 F.3d at 973. 12. See Markman, 772 F. Supp. at 1536 (debating the terms "inventory," "report,~' and "attached to"). 13. ld. at 1537. 14. The Federal Circuit was created on October 1, 1982, and has exehisive appdlat¢ jurisdiction in patent cases. See ROBERT L. HARMON, PATENTSAND THE FEDERAL CIRCUIT ix (3d ed. 1994). The court was to create uniformity in patent decisions and foster innovation. See Markman, 116 S. Ct. 1384, 1396 (1996) (citation omitted). 15. See Markman, 52 F.3d at 970 n.l. 16. See id. at 970 (Judges Rich, Nies, Michel, Plager, Lourie, Clevcnger, and Sehall joined the opinion, while Judge Bryson did not participate in the disposition). 17. See id. at 986. The court did not address whether the construction of means- plus-function claims under 35 U.S.C. § 112(6) (1994) is a question of law or fact. See it. at 977 n.8. No. 1 ] Markman and Warner-Jenkinson 189 The Federal Circuit reasoned that reviewing "a grant of JMOL requires careful distinction between fact and law, "'n because the assessment of factual findings occurs under the substantial evidence standard, while matters of law are reviewed de novo) 9 The court then attempted to dissect