For the second time in less than two years, the Federal Circuit has issued an en banc decision considerably narrowing the application of the doctrine of equivalents. Further restricting patent holders' ability to bring patent infringement claims, the court in Johnson & Johnson Associates Inc. v. R.E. Service Co., Inc., held in a 12-1 vote that disclosed but unclaimed subject matter was dedicated to the public. This opinion follows the court's heralded decision, in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc), which was recently vacated by the Supreme Court, that the doctrine of equivalents does not apply whenever there was any prosecution history estoppel established. (See Holland & Knight's commentary on the Festo decision at http://www.hklaw.com/OtherPublication.asp?Article=1603.)
In Johnson, Johnson & Johnson brought suit against R.E. Service Co., Inc. (RES) for infringement of U.S. Patent No. 5,13,050. The patented technology related to the manufacture of a printed circuit board, which is a thin plate on which computer chips or other electronic components are placed. The '050 patent claims an assembly that prevents damage to the fragile copper foil used in layering the circuit board by adhering the copper foil to a substrate sheet of aluminum. While the '050 patent specifically limited the claims to "a sheet of aluminum" and "the aluminum sheet," the specification stated that "other metals, such as stainless steel or nickel alloys, may be used." RES manufactured laminates of copper foil and a substrate sheet of steel, instead of aluminum. Applying the doctrine of equivalents, the Northern District of California entered judgment against RES based on the jury's verdict that steel was the equivalent of aluminum, and that RES willfully had infringed Johnson's patent. The Federal Circuit reversed, finding that since Johnson disclosed but did not claim the steel substrates, Johnson could not invoke the doctrine of equivalents to cover printed circuit boards that used steel.
According to the court, claims define and give notice of the scope of patent protection both to the examiner at the U.S. Patent and Trademark Office during prosecution and to the public at large after the patent has issued, including potential competitors. The doctrine of equivalents limits the effectiveness of this notice by extending the patent holders' rights beyond the literal scope of the claim to those devices that perform substantially the same function in substantially the same way to achieve substantially the same result.
Noting that the claims requirement presupposes that a patent applicant will define the invention in the claims, the court issued a bright-line rule that patent holders cannot apply the doctrine of equivalents to include unclaimed subject matter covered in the specification. According to the court, "when a patent drafter discloses but declines to claim subject matter . . . this action dedicates that unclaimed subject matter to the public. Application of the doctrine of equivalents 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." Moreover, the court noted, "a patentee cannot narrowly claim an invention to avoid prosecution scrutiny by the PTO, and then, after patent issuance, use the doctrine of equivalents to establish infringement because the specification discloses equivalents." The court thus upheld Maxwell v. Baker, Inc., 86 F.3d 1098 (Fed. Cir. 1996), while overruling YBM Magnex, Inc. v. Int'l Trade Comm'n, 145 F.3d 1317 (Fed. Cir. 1998), which had limited Maxwell to its facts.
In dissent, Judge Newman (the author of YBM Magnex) described the decision as "yet another assault on the doctrine of equivalents." According to Judge Newman, the per se rule contravenes the "public interest in fostering innovation and technological advance" because it "imposes legal obstacles to the disclosure of scientific and technologic information." One purpose of the patent system is to disseminate information, and by penalizing the inclusion of information in the specification, the patent becomes less useful as a source of knowledge. Arguing that "the placement of an increasing number of pitfalls in the path of patentees serves only as a deterrent to innovation," Judge Newman agreed with two of the amici, the American Intellectual Property Law Association and the American Bar Association, that as a result of the decision, investors will "restrict the technical content of patent specifications."
In light of the Supreme Court's recent decision vacating Festo, the viability of Johnson may be uncertain. In the meantime, following the decision in Johnson, claims will define the scope of patent protection, and patent drafters thus must be very careful to clearly articulate their claims. Patent holders who disclose the details of their invention in the patent application, but not the claim itself, will not be able to invoke the doctrine of equivalents to include the disclosed but unclaimed applications. As the opinion notes, however, patent applicants who fail to claim disclosed subject mater before the patent issues will not be without a remedy. Within two years of the patent's issue, a patent holder may file a reissue application and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter. Alternatively, the patent holder can claim the disclosed subject matter by filing a separate continuing application.
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