Metaullics Systems Co., L.P. v. Paul v. Cooper and Molten Metal Equipment Innovations, Inc.

100 F.3d 938, 40 U.S.P.Q. 2d (BNA) 1798, 40 U.S.P.Q. (BNA) 1798, 1996 U.S. App. LEXIS 29951, 1996 WL 663777

• Court: Court of Appeals for the Federal Circuit
• Decided: November 15, 1996
• Docket: 96-1290
• Status: Published

Opinions

Order for the court filed by Circuit Judge MAYER. Opinion concurring in part filed by Circuit Judge LOURIE.

ORDER

MAYER, Circuit Judge.

Metaullics Systems Co., L.P. (Metaullics) appeals from the United States District Court for the Northern District of Ohio’s denial of its motion for a preliminary injunction against Paul Y. Cooper and Molten Metal Equipment Innovations, Inc. (together, MMEI), Metaullics Systems Co., L.P. v. Cooper, No. 96-CV-554 (N.D.Ohio March 28, 1996). Metaullics sued MMEI for infringement of U.S. Patent No. 4,169,584 (’584 patent), which expired on October 2, 1996.

The only relevant fact in this appeal is that the ’584 patent has expired. Thus, Metaullics no longer may seek or obtain a preliminary injunction against infringement of the ’584 patent. Accordingly, this appeal is moot. See Illinois Tool Works, Inc. v. Grip-Pak, Inc., 906 F.2d 679, 681 n. 1, 15 USPQ2d 1307, 1308 (Fed.Cir.1990).

It is noteworthy nonetheless that shortly before the ’584 patent expired, MMEI moved to withdraw its argument that this court should not construe the claims of the ’584 patent in this appeal. In its supporting memorandum, MMEI wrote,

[MMEI] had previously expressed opposition based on the concern that the abbreviated nature of the preliminary injunction hearing did not allow for a fully developed record. In light of the fact that the patent will expire on October 2, 1996, however, the interests of finality and economy outweigh [MMEI’s] concerns about an inadequate opportunity to develop the record.

We disagree with MMEI’s turnabout conclusion. In Markman v. Westview Instruments, Inc., — U.S. -, -, 116 S.Ct. 1384, 1395, 134 L.Ed.2d 577 (1996), the Supreme Court held that judges, not juries, should construe patents. Acknowledging the “evidentiary underpinnings” of claim construction, the Court based its holding upon neither history nor precedent; instead, it relied upon functional considerations. The Court reasoned,

Where history and precedent provide no clear answers, functional considerations also play their part in the choice between judge and jury to define terms of art.... So it turns out here, for judges, not juries, are the better suited to find the acquired meaning of patent terms. The construction of instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis.

Id.

Judges derive their interpretive advantage relative to juries not only from their training in how but also from their knowledge of when to interpret and construe instruments. Indeed, like juries, judges may err in claim construction. See Johns Hopkins Univ. v. CellPro, 931 F.Supp. 303, 313 (D.Del.1996) (“[T]he court’s construction of this claim at trial appears to have been in error.”). But we are likely to construe claims better when considering, rather than wanting, a developed record. See Oakley, Inc. v. Int’l Tropic-Cal, Inc., 923 F.2d 167, 168, 17 USPQ2d 1401, 1403 (Fed.Cir.1991) (inadequate findings may preclude “meaningful appellate review”). To construe claims prematurely, as MMEI now suggests we proceed, would undermine the wisdom of reserving claim construction for judges. We therefore decline the invitation.

Even if this court were to disregard the Supreme Court’s functional rationale, because claim construction is a mixed question of law and fact, see Markman, — U.S. at -, 116 S.Ct. at 1390 (classifying claim construction as “a mongrel practice” consisting of factual and legal components), we may be required to defer to a trial court’s factual findings. Where a district court makes findings of fact as a part of claim construction, we may not set them aside absent clear error. See Fed.R.CivJP. 52(a) (“Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous.... ”).

Accordingly, this appeal is DISMISSED, and each party shall bear its own costs.