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Federal Circuit Clarifies Precedents on Doctrine of Equivalents

March 28, 2002

Decision icon Decision, en banc

Last Month at the Federal Circuit - April 2002

Judges: En banc, PER CURIAM, with several concurring opinions; dissenting opinion by Judge Newman

In Johnson & Johnston Associates, Inc. v. R.E. Service Co., Inc., No. 99-1076 (Fed. Cir. Mar. 28, 2002), the Federal Circuit ruled that a patentee cannot apply the DOE to cover unclaimed subject matter disclosed in the specification. To the extent that this decision conflicts with that of YBM Magnex, Inc. v. International Trade Commission, 145 F.3d 1317 (Fed. Cir. 1998), the en banc court expressly overruled that case.

Johnson & Johnston Associates, Inc. (“Johnston”) asserted U.S. Patent No. 5,153,050 (“the ‘050 patent”) against R.E. Service Company and Mark Frater (collectively “RES”). A jury found that RES had willfully infringed claims 1 and 2 of the ‘050 patent under the DOE and awarded Johnston over a million dollars in damages. The district court awarded enhanced damages, and the case was appealed. After a hearing before a three-judge panel, the Federal Circuit ordered an en banc rehearing of the DOE issue, which occurred in late 2001.

The ‘050 patent relates to a method of manufacturing printed circuit boards that stacks sheets of copper foil and prepreg in a press and heats them to melt the resin in the prepreg and bond the layers. Manual handling of the thin sheets of copper foil can damage or contaminate them. The ‘050 patent claims an assembly that prevents much of this damage by adhering the fragile copper foil to a stiffer substrate sheet of aluminum. The aluminum substrate protects the copper foil during handling and the heating steps and can be removed and recycled.

After RES began making laminates for the manufacture of printed circuit boards that joined copper foil to a sheet of steel, Johnston sued for infringement. The district court granted RES’s motion for SJ of no literal infringement but denied as to the DOE. With respect to the DOE, RES argued, citing Maxwell v. Baker, Inc., 86 F.3d 1098 (Fed. Cir. 1996), that the patent specification, which disclosed a steel substrate but did not claim it, constituted a dedication of the steel substrate to the public. Johnston countered that the steel substrate had not been dedicated to the public, citing YBM Magnex. The district court ruled that the ‘050 patent did not dedicate the steel substrate to the public and gave the DOE issue to a jury, which found RES liable for willful infringement under the DOE.

This appeal, therefore, was essentially a dispute over whether Maxwell or YBM Magnex applied in this case. In Maxwell, the Court observed, it had essentially concluded that there existed a wellestablished rule that subject matter disclosed but not claimed in a patent application is dedicated to the public. In YBM Magnex, however, the Court concluded that Maxwell had not created a new rule of law that the DOE could never encompass subject matter disclosed in the specification but not claimed. Rather, the Court characterized YBM Magnex as purporting to limit Maxwell to situations where a patent discloses an unclaimed alternative distinct from the claimed invention.

In addressing the issue, the Court reviewed extensive precedents proclaiming the virtues of the notice function of claims and the continued existence of the DOE. It emphasized its decisions that had concluded that application of the DOE to recapture subject matter deliberately left unclaimed would conflict with the primacy of the claims in defining the scope of the patentee’s exclusive right. In the end, the Court concluded that by enforcing the Maxwell rule, courts would avoid the problem of extending the coverage of an exclusive right to encompass more than that properly examined by the PTO.

Applying its conclusion to the facts of this case, the Court observed that the specification expressly discloses that while aluminum is the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, could be used. Having disclosed without claiming the steel substrates, the Federal Circuit concluded, Johnston cannot now invoke the DOE to extend its aluminum limitation to encompass steel. Accordingly, the Federal Circuit reversed the district court’s judgment of infringement under the DOE.

The Federal Circuit emphasized that a patentee who inadvertently fails to claim disclosed subject matter is not left without a remedy, given his ability to file a reissue or continuation application.

The judges filed various concurring opinions to amplify the decision, to offer alternative reasoning, or to address the dissent. Judge Rader, for example, reasoned that the Court’s ruling reconciled the notice function of the claims with the protective function of the DOE by preventing applicants from recapturing subject matter that the patent drafter reasonably could have foreseen during the application process and included in the claims. Judge Lourie addressed this point in his concurrence, noting that, having been a patent lawyer, he was not convinced that introducing the concept of foreseeability was the answer to the equivalence dilemma.

Judge Newman, author of YBM Magnex, saw the majority opinion as an assault on the DOE that establishes a new absolute bar to equivalency when there is no prosecution history estoppel, no prior art, no disclaimer, and no abandonment.