386
Opinion of the Court
descriptions and terms of art often require peculiar knowledge and education to understand them aright . . . . Indeed, the whole subject-matter of a patent is an embodied conception outside of the patent itself . . . . This outward embodiment of the terms contained in the patent is the thing invented, and is to be properly sought, like the explanation of all latent ambiguities arising from the description of external things, by evidence in pais." Ibid.
Bischoff does not then, as Markman contends, hold that the use of expert testimony about the meaning of terms of art requires the judge to submit the question of their construction to the jury. It is instead a case in which the Court drew a line between issues of document interpretation and product identification, and held that expert testimony was properly presented to the jury on the latter, ultimate issue, whether the physical objects produced by the patent were identical. The Court did not see the decision as bearing upon the appropriate treatment of disputed terms. As the opinion emphasized, the Court's "view of the case is not intended to, and does not, trench upon the doctrine that the construction of written instruments is the province of the court alone. It is not the construction of the instrument, but the character of the thing invented, which is sought in questions of identity and diversity of inventions." Id., at 816 (emphasis added). Tucker, the second case proffered by Markman, is to the same effect. Its reasoning rested expressly on Bischoff, and it just as clearly noted that in addressing the ultimate issue of mixed fact and law, it was for the court to "lay down to the jury the law which should govern them." Tucker, supra, at 455.12
12 We are also unpersuaded by petitioner's heavy reliance upon the decision of Justice Story on circuit in Washburn v. Gould, 29 F. Cas. 312 (No. 17,214) (CC Mass. 1844). Although he wrote that "[t]he jury are to judge of the meaning of words of art, and technical phrases," id., at 325, he did so in describing the decision in Neilson v. Harford, Webs. Pat. Cas. 328
Page: Index Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 NextLast modified: October 4, 2007