Markman v. Westview Instruments, Inc.

Decision Date05 April 1995
Docket NumberNo. 92-1049,92-1049
Citation34 USPQ2d 1321,52 F.3d 967
Parties, 34 U.S.P.Q.2d 1321 Herbert MARKMAN and Positek, Inc., Plaintiffs-Appellants, v. WESTVIEW INSTRUMENTS, INC. and Althon Enterprises, Inc., Defendants-Appellees.
CourtU.S. Court of Appeals — Federal Circuit

William B. Mallin, Eckert, Seamans, Cherin & Mellott, Pittsburgh, PA, argued for plaintiffs-appellants. With him on the brief were Lewis F. Gould, Jr., Timothy P. Ryan and Brian M. Martin.

Frank H. Griffin, III, Gollatz, Griffin, Ewing & McCarthy, Philadelphia, PA, argued for defendants-appellees. With him on the brief were Peter A. Vogt and Polly M. Shaffer.

Morton Amster, Anthony F. LoCicero, Joel E. Lutzker and David H. Kagan, Amster, Rothstein & Ebenstein, New York City, for amici curiae, Matsushita Elec. Corp. of America and Matsushita Elec. Indus. Co., Ltd.

Gregory A. Long and Kent R. Raygor, Sheppard, Mullin, Richter & Hampton, Los Angeles, CA, Charles Fried and Arthur R. Miller, Cambridge, MA, Donald Chisum, Morrison & Foerster, Seattle, WA and William Alsup, Morrison & Foerster, San Francisco, CA, for amicus curiae, Acuson Corp. and Honeywell, Inc.

R. Carl Moy, Asst. Professor, William Mitchell College of Law, Saint Paul, MN, for amicus curiae R. Carl Moy.

Sidney David, Charles P. Kennedy, William L. Mentlik and Roy H. Wepner, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, NJ, for amici curiae, Ohmeda, Inc.

S. Leslie Misrock, Rory J. Radding, Steven I. Wallach, Pennie & Edmonds, New York City, for amicus curiae, Ad Hoc Committee to Promote Uniformity in the Patent System.

Gary L. Newtson, President, American Intellectual Property Law Ass., Roger W. Parkhurst, Parkhurst, Wendel & Rossi, of Alexandria, Harold C. Wegner, Wegner, Cantor, Mueller & Player, and Nancy J. Linck, Cushman, Darby & Cushman, Washington, DC

Roy E. Hofer, President, The Federal Circuit Bar Ass'n, Washington, DC, Anne E. Brookes, Honigman Miller Schwartz & Cohn, Houston, TX, and Robert J. Carlson, Christensen, O'Connor, Johnson & Kindness, of Seattle, WA, for amicus curiae, Federal Circuit Bar Ass'n.


Opinion for the Court filed by Chief Judge ARCHER, in which Circuit Judges RICH, NIES, MICHEL, PLAGER, LOURIE, CLEVENGER, and SCHALL join. Concurring opinions filed by Circuit Judges MAYER, and RADER. Dissenting opinion filed by Circuit Judge NEWMAN.

ARCHER, Chief Judge.

Herbert Markman and Positek, Inc. (collectively referred to as Markman) appeal from the judgment of the United States District Court for the Eastern District of Pennsylvania, Civil Action No. 91-0940 (entered Oct. 1, 1991), that Westview Instruments, Inc. and Althon Enterprises, Inc. (collectively referred to as Westview) did not infringe claims 1 or 10 of United States Reissue Patent No. 33,054, notwithstanding the jury's verdict to the contrary. We have ordered that this case be reheard in banc. 1 We affirm the judgment of noninfringement. In doing so, we conclude that the interpretation and construction of patent claims, which define the scope of the patentee's rights under the patent, is a matter of law exclusively for

the court. Thus, in this case the district court properly discharged its obligation to delineate the scope of the claim on motion for judgment as a matter of law when the jury had rendered a verdict that was incompatible with a proper claim construction.


A. In the dry-cleaning industry, articles of clothing typically are taken in from customers, recorded in some form, and then sorted according to criteria such as type of clothing and type of cleaning required. During the sorting process, articles of clothing belonging to one customer may be combined together, and also may be combined with similar clothing belonging to other customers, in order to make the cleaning process more efficient and less costly. After the articles of clothing are sorted, they may be cleaned in the same establishment or transported to another establishment for cleaning. During the cleaning process, the articles of clothing move through different locations in the establishment. After cleaning, of course, the articles of clothing must be unsorted and returned to the respective customers.

Markman is the inventor named in and the owner of United States Reissue Patent No. 33,054 (the '054 patent), titled "Inventory Control and Reporting System for Drycleaning Stores." Markman's original patent No. 4,550,246 was reissued and the reissue is the patent in suit. Positek is a licensee under the patent in the dry-cleaning business.

The '054 patent is directed to an inventory-control system that assertedly solves inventory-related problems prevalent in the dry-cleaning business. As the '054 patent specification discusses, articles of clothing can be lost in the sorting and cleaning process, and it has been found in the dry-cleaning business that even a small percentage-loss of articles of clothing will generate great consumer dissatisfaction. Also, attendant personnel might send clothing through the cleaning process but pocket the proceeds of the transactions and destroy or fail to do the appropriate paperwork, thereby servicing the customers adequately but stealing from the business. In such circumstances it is difficult for the business owner to locate the loss of profits and to deter such activities.

The invention of the '054 patent is described in detail in the specification which states that the inventory control system is "capable of monitoring and reporting upon the status, location and throughput of inventory in an establishment," and that by using the invention of the '054 patent, "the progress of articles through the laundry and drycleaning system can be completely monitored." In this way, the business owner can "reconcile[ ] [the inventory] at any point in the sequence" of sorting, cleaning, and unsorting clothing, and can "detect and localize spurious additions to inventory as well as spurious deletions therefrom."

According to the specification's description of the invention, as customers bring in their articles of clothing for cleaning, the articles are accumulated by an attendant. The attendant enters information on a keyboard identifying at least the particular customer, the type of articles being deposited, and the particular cleaning operations to be performed. Other information may be entered depending upon the complexity of the system.

A data processor stores and processes the data entered by the attendant, associating sequential customers and transactions with a unique indicium such as a number. The processor is connected to a printer that generates a written record of the stored information associated with the particular customers and transactions. No transaction can proceed without generating a written record, thereby ensuring that each transaction is accounted for.

The patent specification specifies that the written record is to have different portions. For example, the written record includes a customer ticket or receipt, a management ticket copy, and a plurality of article tags. The article tags are to be attached to individual articles or groups of articles in inventory. The management ticket and the article tags contain a bar code and a unique indicium such as a number associated with a customer, transaction, and other information. The bar code records are custom printed sequentially, as sequential customer transactions occur.

The tags thus not only associate a bar code with transactions, but also with an article or group of articles, persons, physical items in inventory, and other information again depending upon the system's complexity.

Optical detector devices are then used to read the bar code indicia, and they may be located at various points in the cleaning process, including at least at the customer service station. The articles are logged through a particular station by scanning the tags containing the bar codes with the detector. The bar codes are used to call up information associated with the customer or transaction, and used to generate reports containing information such as the location of articles within the system, the number of articles located at a particular point in the system, etc. Obviously, the more optical detectors, the tighter the inventory control. After the articles have been processed, optical detection of the bar codes can be used to reorganize the articles into customer packages. The overall result is that additions to and deletions from inventory can be located--wherever an optical detector appears--and can be associated with particular customers and articles of clothing. In this way the inventory can be fully reconciled.

In claim 1, the only independent claim involved in this appeal, Markman claims his invention to be (emphasis added):

1. The inventory control and reporting system, comprising:

a data input device for manual operation by an attendant, the input device having switch means operable to encode information relating to sequential transactions, each of the transactions having articles associated therewith, said information including transaction identity and descriptions of each of said articles associated with the transactions;

a data processor including memory operable to record said information and means to maintain an inventory total, said data processor having means to associate sequential transactions with unique sequential indicia and to generate at least one report of said total and said transactions, the unique sequential indicia and the descriptions of articles in the sequential transactions being reconcilable against one another;

a dot matrix printer operable under control of the data processor to generate a written record of the indicia associated with sequential transactions, the written record including optically-detectable bar codes having a series of...

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